The True Colors of Trademark Law: Greenlighting a Red Tide of Anti Competition Blues

30 Pages Posted: 12 Dec 2008 Last revised: 2 Feb 2009

See all articles by Ann Bartow

Ann Bartow

Franklin Pierce Center for IP at UNH Law

Date Written: December 11, 2008

Abstract

The elevation of color to stand-alone trademark status illustrates the unbounded nature of trademarks within the judicial consciousness. The availability of color-alone marks also facilitates the commoditization of color in ways that complicate the development and distribution of products and services that use color for multiple purposes conterminously. The economic case for color-alone trademarks is severely undermined by careful observation of the ways that colors are actually deployed in commerce, which makes it clear that the trademarks of multiple goods and services can utilize the same color to telegraph the same message without confusing anyone or diluting the commercial power of textual or symbolic trademarks.

Trademark law can be used to monopolistically harness the aesthetic appeal or preexisting social meaning of a color. The Supreme Court was wrong to facilitate this abuse of trademark powers when it decided in Qualitex v. Jacobson Products Co. that colors alone could constitute protectable trademarks. Long ago the Supreme Court held in the Sears, Roebuck & Co. v Stiffel Co. and Compco Corp. v. Day-Brite Lighting, Inc. cases that the Intellectual Property Clause of the Constitution preserves a right to copy any product feature that is unrestricted by patents or copyrights. Ruling in favor of color-alone trademarks abrogated this important principle for no good reason. The Qualitex holding did not lessen color related consumer confusion, because there was not evidence of any. Instead it reduced competition and consumer choice by creating illegitimate aesthetic and communicative cartels.

The primary doctrinal arguments against recognizing color-alone trademarks raised here include aesthetic functionality, the related concept of communicative functionality, uncertainty about scope, and color exhaustion. Colors always add aesthetic value, and often communicate messages unrelated to commercial source. Coupled with the uncertainties related to color-alone marks and the risks of color exhaustion, the anticompetitive effects of color monopolies outweigh any possible social benefit from a regime that permits registration of color-alone trademarks.

It is further argued that if any court attempted to declare a color "famous" for dilution purposes, thereby granting a commercial entity broad rights to monopolize the color well beyond the context in which it is used in commerce, there would be a furious backlash against this ill-advised doctrine. The palette of commercially appealing colors is far more limited than the dictionary of attractive and usable words, and could be radically depleted by deployment of dilution precepts rather quickly. Courts that recognize this may relegate color-alone marks to some second class status that is ineligible for dilution protections, preserving color availability somewhat but further warping trademark doctrine.

Keywords: trademarks, trademark law, unfair competition, service marks, trade dress, product features, Lanham Act

JEL Classification: K00, K1, K10, K2, K20, K39, L12

Suggested Citation

Bartow, Ann, The True Colors of Trademark Law: Greenlighting a Red Tide of Anti Competition Blues (December 11, 2008). Kentucky Law Journal, Vol. 97, No. 2, 2008. Available at SSRN: https://ssrn.com/abstract=1314951

Ann Bartow (Contact Author)

Franklin Pierce Center for IP at UNH Law ( email )

Two White Street
Concord, NH 03301
United States

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