[governance] Can a Company Trademark the Colors On Its Website?

[Riaz K Tayob]

Opinion | September 15, 2012


  Can a Company Trademark the Colors On Its Website?

http://www.brookings.edu/research/opinions/2012/09/15-trademark-villasenor?cid=em_alert

Earlier this month, a federal appeals court ruled 
<http://www.ca2.uscourts.gov/decisions/isysquery/b9e3c53f-643d-48b5-bd00-ef7bcb9ae9f2/1/doc/11-3303_opn.pdf> 
[PDF] that the contrasting red soles on shoes from designer Christian 
Louboutin are sufficiently distinctive to warrant trademark protection. 
The ruling adds an important chapter to the history of color trademarks, 
and has broad implications that go well beyond the fashion industry. To 
what extent, for example, might colors on web sites be eligible for 
trademark protection?

A trademark is "a word, phrase, symbol, and/or design that identifies 
and distinguishes the source of the goods of one party from those of 
others." Examples of famous trademarks include the Nike swoosh symbol, 
the McDonald's Golden Arches, and the phrase "Intel Inside." In the 
landmark 1995 /Qualitex/ ruling involving the color of dry cleaning 
equipment, the Supreme Court held 
<http://supreme.justia.com/cases/federal/us/514/159/case.html> that U.S. 
trademark law as established under the 1940s-era Lanham Act "permits the 
registration of a trademark that consists, purely and simply, of a 
color." Color alone, wrote the Court, can at least sometimes "meet the 
basic legal requirements for use as a trademark. It can act as a symbol 
that distinguishes a firm's goods and identifies their source, without 
serving any other significant function."

Mr. Louboutin started coloring shoe outsoles in the early 1990s, 
choosing red because he considered it "engaging, flirtatious, memorable 
and the color of passion 
<http://www.leagle.com/xmlResult.aspx?xmldoc=In%20FDCO%2020110810000T.xml>." 
Over the subsequent years, the red soles became a widely recognized 
identifier of the Louboutin brand. "When it comes to women's shoes made 
for style rather than walking," Reuters wrote 
<http://uk.reuters.com/article/2007/09/05/life-shoes-luxury-dc-idUKN0522082920070905> 
in 2007, "Christian Louboutin footwear with their distinctive red soles 
lead the pack, according to a survey of wealthy American consumers."

In 2008, the U.S. Patent and Trademark Office granted Louboutin a 
trademark 
<http://iplegalfreebies.files.wordpress.com/2012/07/louboutin-uspto-reg-no-3361597.pdf> 
[PDF] for a "lacquered red sole on footwear," and in 2011, when the 
company learned that Yves Saint Laurent was selling shoes with both a 
red sole and a monochrome red "upper," it filed a trademark infringement 
claim in a New York federal district court. After the court refused to 
grant an injunction against Yves Saint Laurent, Louboutin appealed.

In a September 5 ruling that both Louboutin and Yves Saint Laurent 
described 
<http://abcnews.go.com/Business/louboutin-entitled-protect-signature-red-sole-court-rules/story?id=17163269> 
as a victory, the United States Court of Appeals for the Second Circuit 
held 
<http://www.ca2.uscourts.gov/decisions/isysquery/b9e3c53f-643d-48b5-bd00-ef7bcb9ae9f2/1/doc/11-3303_opn.pdf> 
[PDF] that Louboutin's lacquered red outsole is "a distinctive symbol 
that qualifies for trademark protection," but only when contrasted with 
a different color used for the other visible portions of the shoe. In 
other words, Yves Saint Laurent's monochrome red shoes walk free, and 
Louboutin's trademark survives, though with a narrower scope.

What does this mean for the ability to trademark colors on web sites? 
Consider the thick, red, horizontal stripe at the top of CNN's web site 
<http://www.cnn.com/>. A person seeing a computer from the other side of 
a room who might not be able to read the print on the screen would 
nonetheless be likely to recognize that it was displaying a page from 
the cnn.com domain. In the context of online news sites, CNN's red 
stripe placed across the top of the screen plays an important role in 
brand identification.

But does it establish trademark rights? The answer turns, among other 
things, on whether the stripe's color and placement are distinctive 
(most likely, yes), whether its use by competitors would create customer 
confusion (quite possibly), and whether it steers clear of being 
functional (maybe).

A product feature cannot serve as a trademark "if it is essential to the 
use or purpose of the article or if it affects the cost or quality of 
the article 
<http://supreme.justia.com/cases/federal/us/532/23/case.html>." This 
functionality doctrine is intended to avoid granting trademarks that 
would give a single company control over a useful feature, and thus 
impede competition. Under some circumstances color can have an important 
functional role -- for instance, if it is used to identify the type of 
medication 
<http://supreme.justia.com/cases/federal/us/456/844/case.html> contained 
in a gelatin capsule. Preventing a generic drug maker from choosing the 
same capsule color as the brand name manufacturer could create confusion 
for both pharmacists and patients.

More subtly and controversially, some courts -- including the Second 
Circuit that issued the Louboutin ruling -- have viewed product features 
that are "aesthetically functional" as ineligible for trademark 
protection. Even a feature that is not functional in the traditional 
sense can be aesthetically functional if allowing it to be trademarked 
"/significantly/ undermines competitors' ability to compete in the 
relevant market 
<http://www.ca2.uscourts.gov/decisions/isysquery/b9e3c53f-643d-48b5-bd00-ef7bcb9ae9f2/1/doc/11-3303_opn.pdf>" 
[PDF].

It could be argued that CNN's red stripe is not functional in either the 
traditional utilitarian sense or aesthetically. After all, a competing 
news site barred from using it could choose to use a green stripe, or no 
stripe at all. But there is also a case to be made in favor of 
functionality: Unlike the sole of a shoe, which has a function tied to 
its non-color attributes, color in a web site can help visitors navigate 
the site.

Another issue is the limited number of basic colors to choose from when 
designing a web site, and the limited number of basic shapes they can be 
used to fill. What would happen if there were no more colors left to 
trademark? In the 1995 /Qualitex/ ruling 
<http://supreme.justia.com/cases/federal/us/514/159/case.html>, the 
Supreme Court considered and rejected depletion as an argument against 
granting trademark protection for colors. At some point, the Court 
reasoned, color choices become functional and thus ineligible for 
protection. And, the Court wrote, when "a color serves as a mark, 
normally alternative colors will likely be available for similar use by 
others."

That may have been true for dry cleaning equipment 
<http://supreme.justia.com/cases/federal/us/514/159/case.html> 
manufacturers in 1995, and for makers of fiberglass insulation 
<http://law.justia.com/cases/federal/appellate-courts/F2/774/1116/10307/> in 
1985 and outboard motor 
<http://law.justia.com/cases/federal/appellate-courts/F3/35/1527/605173/> companies 
in 1994. But is it well matched to an era when almost every company has 
a web site, and in some industries, such as online news, or, for that 
matter, high end shoes and jewelry 
<http://blogs.findlaw.com/second_circuit/2011/10/tiffany-files-amicus-brief-in-louboutin-ysl-trademark-dispute.html>, 
there can be dozens or hundreds of competing companies? In this context, 
the assumptions of the /Qualitex/ Court regarding depletion may warrant 
reexamination.

Lynne Beresford, who served as Commissioner for Trademarks at the U.S. 
Patent and Trademark Office from 2005 to 2010, thinks that the use of 
color on web sites might, under some circumstances, be eligible for 
trademark protection. However, she notes, she has "not seen any 
successful trademark applications for color-only marks where the company 
hasn't made a significant effort to alert the public about the 
trademark." In other words, merely using a distinctive green border on a 
web site almost certainly wouldn't be sufficient to obtain registration.

A closely related additional issue concerns copyright. William & Mary 
law professor Laura Heymann 
<http://law2.wm.edu/faculty/bios/fulltime/heymann-920.php?svr=law> has 
written <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=956217> that 
the line between trademark and copyright is "considerably blurrier" than 
at the other intellectual property law interfaces. She also observes 
that the importance of overlapping rights -- i.e., the possibility that 
a piece of creative content could have both copyright and trademark 
protection, is often underappreciated.

Web sites and other online content (such as virtual worlds) will test 
the overlap between trademark and copyright in new and complex ways. The 
design of a company's web site, including the layout, colors, choice of 
fonts, and navigation among pages, is protected by copyright. The 
company's name and logo on that website are protected by trademark. The 
extent to which the use of color on the site can also fall within the 
scope of trademark protection is an issue likely to end up before the 
courts in the coming years.

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