Color Wars

by Mike Mintz on November 29, 2011 · 0 comments

in martindale.com

You may like the color purple, whether it’s the movie, the Broadway play or the actual color. But, don’t try to use the color purple – that is the shade pantone 2865c – on a chocolate candy bar wrapper or chocolate drink container. It belongs to the candy company Cadbury. That’s right. Cadbury owns a shade of the color purple. After three years of litigation against Nestle, Cadbury won the official rights over its historic color purple, used since 1914, which it now “jealously” protects through an ironclad, court confirmed, trademark.

Color trademarks are extremely difficult to obtain, because the consumer must consider the color to be synonymous with the brand. In other words, the color must function as a unique identifier of the brand. In the landmark Supreme Court case of Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), the Court determined that a product feature or color is functional as a unique identifier only “if it is essential to the purpose of the article or if it affects the cost or quality of the article.”

To be sure, since the Qualitex decision, the battle over color registrations has not been limited to candy wrappers. Currently, Christian Louboutin and Yves Saint Laurent are warring over the color red to be used for their heels’ soles. And, more importantly, the Northern District of Georgia recently issued a decision in Unique Sports Prods. v. Ferrari Importing Co., 2011 U.S. Dist. LEXIS 124801 (N.D. Ga. Oct. 27, 2011), regarding the validity of and infringement upon a light blue trademark for tennis racket grip tape.

In Unique, Unique Sports Products received a trademark for the light blue color of its “Tourna Grip,” which is a light blue, tennis racket overgrip tape used by professional tennis players. In this case, Unique accuses Ferrari Importing Company of trademark infringement for Ferrari’s marketing of racket grip tape in a variety of colors, including light blue. Ferrari alleged that Unique’s trademark was invalid and unenforceable. The court disagreed and entered judgment in favor of Unique.

However, while the court held that Unique’s trademark was valid and enforceable, it nonetheless found that Ferrari did not infringe on Unique’s trademark. The court came to this conclusion after considering several factors, which lead to the conclusion that Light Blue Tourna Grip was dissimilar to Ferrari’s gauze tape, which had a distinguishable shade, texture and appearance. Therefore, there was little likelihood of consumer confusion between Ferrari’s gauze tape and Light Blue Tourna Grip. Additionally, the court found that overgrip tape (Tourna Grip) and gauze tape (Ferrari) were found dissimilar products altogether.

So, while Cadbury prevailed in its fight for the color purple for chocolate bar wrappers and chocolate milk containers, the courts are not freely giving out ownership of the colors of the rainbow. No one shoe designer can own the color red, but it seems that, as Louboutin is arguing in its appeal, maybe one can own a uniquely lacquered red heel sole.

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