Colorful Words (No, Not That Kind)

Daphne Singer

            2025 is proving to be nearly as transformational as a year for color and intellectual property law as 1995. Thirty years ago, the Supreme Court ruled in Qualitex Co. v. Jacobson Products Co..[1] that single color marks can function as trademarks if they acquire secondary meaning and serve to identify the source of the product without having a functional purpose.[2] More importantly, Amy Heckerling’s Clueless instantly achieved both secondary meaning and source identification for bright yellow plaid.[3] This year, however, a slate of cases and articles have presented a stark proposal that the tide of protections for color marks in Qualitex may be receding.

            This January, the Federal Circuit affirmed a T.T.A.B. cancellation of pink ceramic hip components in CeramTec GmbH v. CoorsTek Bioceramics LLC.[4] The court applied the four-factor Morton-Norwich factors and found that the prior existence of a utility patent and the advertising materials promoting the functional benefits of chromia, one of the elements in the ceramic formula which created the pink color of the hip component.[5]

            On the opposite end of the Wicked: For Good marketing color scheme, the Federal Circuit denied coverage for dark green medical gloves on the basis of the color’s genericness in In re PT Medisafe Technologies.[6] The court expanded a genericness test from Milwaukee Electric Tool Corp. v. Freud America, Inc.[7] to include colors along with other types of generic marks.[8] Under the Milwaukee two step test, the correct inquiry is to “ [(i)] first consider the genus of goods or services at issue, and [(ii)] second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services. . . . Accordingly, we will identify the appropriate genus of goods and then determine whether the color . . . is so common within the relevant genus that consumers would primarily associate it with the genus rather than as indicating a unique source of goods within the genus.”[9] As the genus of goods were medical examination gloves and dark green gloves are commonly used in the medical glove industry, under the Milwaukee test the Federal Circuit found the gloves were generic.[10]

            These findings are symptomatic of a greater trend in trade dress protection towards decreasing mechanisms of protection for color marks. While trade dress encompasses color marks,[11] whether color marks are truly accessible as trademarks is another matter. A recent quantitative empirical study by Dr. Xioren Wang at the University of Dundee analyzed 854 single-color trademark applications recorded at the USPTO.[12] Dr. Wang’s study found that 30-40% of colors had been depleted in popular classes such as Class 9 (software), Class 7 (machines), Class 5 (pharmaceuticals).[13] Additionally, through the study as well as psychological research on business and consumer preferences in color, some color values, such as the brightness, saturation, and hue of a particular shade are of greater worth to a business, and thus those colors that are not depleted may be a deterrent to customers, further narrowing the pool of prospective trademarks.[14] Felicia Caponigri at Marquette University Law School proposed a novel argument earlier this summer in an article for the American University Law Review that the cultural value of a color mark during a pop culture moment, such as “Brat Green” or “Barbie Pink” renders the mark, at least temporarily, functional and thus unable to serve as a trademark.[15]

            The court cases, studies, and novel legal arguments advanced in the field of color marks this year seem to present a dismal case for any practitioners seeking to advance clients’ applications’ for color marks. However, a solution may lie in a small green stone. Or rather, the words attached to that small green stone. In celebration of the jewelry company’s twentieth year of operation, Brilliant Earth launched a line of light green laboratory grown diamonds, marketed as their “exclusive Pacific Green” color.[16] Within the jewelry industry specifically, claiming exclusive use of a single color as part of a trade dress claim has been heavily scrutinized by federal courts due to the limited colors available in gemstone and metal alloys, and the heavy historic symbolism of certain colors in a jewelry context.[17] Green-gold has been held to be insufficiently unique in the context of ancient-style jewelry, and thus an element that cannot be protected along with others in a trade dress jewelry design.[18] Likewise, the words “red gold” were found to have been historically used in the jewelry context and thus as they were common in the trade, unable to be used as a word mark in reference to the color.[19] Brilliant Earth’s strategy—devising a specific color name, “Pacific Green” to refer to a material, a light green lab diamond, the material of which the brand may be unable to protect itself as a color mark, would not necessarily result in the same failures as these prior color jewelry marks. Still, this is only one approach. Any practitioners applying for color trademarks or advancing Section 43(a) trade dress assertions with color mark components must balance their clients’ interests against the wave of Federal Circuit cases and academic studies that have been published this year. And, not that it needs to be said, if the color marks have the potential to be as iconic as Cher Horowitz’s yellow plaid, that wouldn’t hurt.