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From Black & White to Technicolor to RGB/CMYK:
Should the USPTO Implement RGB/CMYK Color Codes in the USPTO Application Process?
Any intellectual property attorney that deals with the United States Patent and Trademark Office (USPTO) will tell you that while they have modernized in many ways, they are partially operating out of the 1950’s. Employee’s aren’t going around in leather jackets and drinking phosphates but turn a corner and you will see a “black and white” world. Prior to 2003, mark registrations were still printed only in black and white and had only code linings for color (pink and red being the same). TMEP § 807.07(g). Eventually the issues of this color by numbers scheme came to light. A blaring problem was the vagueness and confusion of issuing the same code lining for different colors, like pink and red. This eventually led to problems like shade confusion and a series of cases where judges analyze shades of colors like they do wordmarks. Shade confusion reflects a fear of deciding at what point a color is so similar to a protected color that confusion in the marketplace is likely to occur. J. Christopher Carraway, Color as a Trademark Under the Lanham Act: Confusion in the Circuits and the Need for Uniformity (1995). Also arising from these series of cases is the color depletion theory, which purports that there is only a limited amount of colors in the spectrum and one trademark owner shouldn’t be able to “monopolize the rainbow.”
Today, a colored design is required if the mark contains color but a lot of the same issues still remain. TMEP § 808.03. One of these issues is an ongoing, strong commitment to word descriptions. In order to register a color mark, applications must include: (1) a claim that the color(s) is a feature of the mark, and (2) a statement in the “Description of the Mark” field naming the color(s) and describing where the color(s) appear(s) and how they are used on the mark. See Covidien LP v. Masimo Corp., 109 USPQD 1696 (T.T.A.B. 2014); Trademark Rule 2.52(b)(1), 37 C.F.R. §2.52(b)(1); see also TMEP § 1202.05(e); 807.07(a) (October 2013).
In fact, in instances of discrepancies, the descriptions supersede the actual registered color:
“In the case of a discrepancy between the drawing and the written description of a color mark, the drawing controls the text. 3 McCarthy, supra, § 19:58.50; see also 37 C.F.R. § 2.52 (‘A drawing depicts the mark sought to be registered.’). This is true with respect to both the objects to which the color is applied and the shade of the color. See TMEP § 1202.05(g) (citing the Federal Circuit as holding that ‘the drawing controlled, such that the [service-mark] application was for the color … applied to’ the particular item depicted in the drawing); id.§ 807.07(c) (‘When the color shown on the drawing page in a paper application, or on the digitized image of the drawing in [an electronic] application, is inconsistent with the color claimed in the written application (e.g., the mark is shown in blue on the drawing, but the color claimed is orange), the drawing controls.’).”
Cedar Valley Exteriors, Inc. v. Professional Exteriors, Inc., 2016 WL 3629078 (D.Minn. 2016).
In 1995, almost ten years before the addition of color to the application process, the Supreme Court held that a sole color was capable of being a trademark as long as it is not functional and has acquired secondary meaning. Qualitex Co, v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). Upon deciding Qualitex, the Supreme Court took the position that shade confusion can be addressed through litigation and that color depletion is best addressed by the functionality requirement, which would filter out any colors that would give a competitive edge. 514 U.S. 159, at 167-68.
This unfortunately falls shorts of the needs of modern business and trademark owners and unnecessarily promotes increased litigation which is costly and inefficient. Today there are still many instances of judges confused with shade confusion and there are companies, like Christian Louboutin (red) or United Parcel Services (UPS) (brown), that have monopolies over certain colors. Overall, the current system hasn’t fully addressed the issues that have been inherent since the beginning of color jurisprudence. As such, it is time to remodel to better reflect the business practices of the 21st century and to critically address issues like shade confusion and color depletion. One major change that can be implemented is the use of a color coding system like RGB or CMYK. The USPTO should update its trademark and color mark policy to require RGB/CMYK identifiers alongside, or instead of, descriptions because the simple color terms being used now, like “green” or “red,” are vague and cause confusion.
An RGB or CMYK identifier is “[a] hexadecimal notation” that formats a red, green, and blue (“RGB”) or cyan, magenta, yellow, and black (“CMYK”) color value. It can also be written as three double digit numbers and begins with a “#” sign.” Christian Louboutin S.A. v. Yves Saint Lauren America Inc., 778 F. Supp. 2d 445, at 455 n.6 (S.D.N.Y. 2011); see also Media.net Advertising FZ-LLC v. NetSeet, Inc., 156 F. Supp. 3d 1052 n.6, at 1064 (N.D.Cal. 2016). Other popular coding systems include Pantone® colors (PMS) and HEX. The main difference between these four are that CMYK and PMS are predominantly used for print, while RGB and HEX are for onscreen display. 
The most commonly used color coding system in today’s age of technology is RGB. RGB is the process by which colors are rendered onscreen through the combination of the colors red, green and blue. The RGB system has predominantly digital applications. This system is used to display colors on mobile devices, computer and laptop screens, TVs, video games and illuminated signs. Id. HEX is mostly used by web designers and developers. A HEX color is conveyed as a hexadecimal notation defined by its mix of the colors red, green and blue. However, HEX is shorthand for its RGB values and is derived through conversion techniques.
PMS colors are patented, standardized color inks made by the Pantone company. The Pantone company has been around for over 50 years and is responsible for the “first comprehensive standardized system of creating and matching colors in the graphic community.” Id. supra n. 2. According to their website, they offer over 5,000 distinct colors organized in two systems, one for packaging and one for product design. Id. supra n. 3. Designers of every ilk use the colors produced by Pantone exclusively and the printers they use refer to the same codes. Id. supra n. 2. This ensures everyone uses the exact same color no matter where they are or what computer, printer, or program they are using. This standardization has led to most businesses and organizations using PMS colors “for their branding, especially logos, to ensure the strictest color consistency across different print products and across the globe.”  Id.
CMYK color (also called four-color process) actually combines tiny transparent dots of cyan, magenta, yellow and black. Different arrangements of large and small transparent dots layer on top of each other to create a wide spectrum of colors. Id. Whereas PMS colors are one solid color throughout, a CMYK color is actually a pattern of different colored dots and how they overlap to make the final color. Some of the strongest evidence there is to support the popularity and wide-use of these coding systems is Wikipedia’s use of RGB and CMYK when defining color. Wikipedia’s page for “Brown” opens with:
“Brown is a composite color. In the CMYK color model used in printing or painting, brown is made by combining red, black, and yellow, or red, yellow, and blue. In the RGB color model used to project colors onto television screens and computer monitors, brown is made by combining red and green, in specific proportions.”
This emphasizes the mainstream role these codes play in today’s world. As a society, we define colors by these codes. But still, the USPTO has refused to play ball and continues to maintain their stance that colors are best dealt with words.
II. The Courts Chromatic Struggle
For years, courts have struggled with color. Specifically, whether or not single colors could be registered as trademarks. In 1906, the Supreme Court expressed their skepticism of whether or not single-color marks could be registered. In A. Leschen & Sons Rope Co., the court stated that it doubted “[w]hether mere color can constitute a valid trade-mark.” 201 U.S. 166, at 171 (1906). The courts rationale was that allowing color marks open the doors to a monopoly of “all the colors of the rainbow.” Re Hanson's Trademark, L. R. 37 Ch. Div. 112. This rationale was also used in Campbell Soup Co. to refuse protection of red and white color labels. 175 F.2d 795 (3d Cir. 1949). In Campbell Soup, the court refused to protect the colors of Campbell’s labels because it would allow Campbell to “monopolize red in all of its shades,” thus negatively affecting competition in an industry where color labels were common. Id. at 798.
Another important thing to note about Campbell Soup is the court reference to “the color depletion theory.” The color depletion theory parallels this idea of a color monopoly in the sense that it purports a limited number of colors, and therefore, it would be unwise to promote further limitation by enabling trademark registrants to “deplete the reservoir.” In re Owens-Corning, 774 F.2d 1116, 1120 (Fed. Cir. 1985).
In 1985, in a seminal color mark case, the court in Owens- Corning recognized the color depletion theory directly conflicts with “the liberating purposes of the [Lanham] Act.” Id. Before Owens-Corning, color was “free.” Gillette Safety Razor Co. v. Triangle Mechanical Laboratories Corp., 4 F.Supp. 319, 324 (E.D.N.Y.1933) (“Color itself is free”); Coca-Cola Co. v. Koke Co., 254 U.S. 143, 147, (1920) (“[T]he coloring matter is free to all who can make it if no extrinsic deceiving element is present”). Ironically, in an attempt to maintain the liberal principles of the Lanham Act, color has been imprisoned by the judiciary.
Pre-Owens-Corning, some courts protected color marks using common law unfair competition principles. One example of this was in Yellow Cab Transit Co. In Yellow Cab Transit Co., the color yellow was protected for use on taxicabs because of its “long-established use” and because it had acquired secondary meaning. 147 F.2d 407, 415 (6th Cir. 1945). However, the court made it explicit that this did not mean “an exclusive right to the use of the primary color yellow.” Id. The acknowledgement that color may be capable of acquiring secondary meaning was a fundamental development in the saga of single-color marks. see Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, at 217 (2d Cir. 2012).
However, it wasn’t until 1985, well after the passage of the Lanham Act, when Owens-Corning was decided that the issue of single color marks really came to fruition. In Owens-Corning, The United States Court of Appeals for the Federal Circuit held that a manufacturer was entitled to register the color “pink” as a trademark for its fibrous glass residential insulation under the Lanham Act because its served no utilitarian purpose and had acquired secondary meaning. This case codified the common-law doctrine of secondary meaning. Id. at 1116. In deciding this case, the court in Owens-Corning also agreed with the Trademark Trial and Appeal Board’s (TTAB) assessment that “[d]eciding likelihood of confusion among color shades ... is no more difficult or subtle than deciding likelihood of confusion where word marks are involved.” In re Owens-Corning Fiberglass Corporation, 221 U.S.P.Q. 1195, 1198 (T.T.A.B. 1984). The court reasoned that because the Board has engaged in such “shade confusion” analysis in the past “without apparent difficulty,” they shouldn’t have any difficulty discerning the minor differences between shades of color. Id.
In reaching this conclusion, the cases the Owens-Corning court cite are: Wire Rope Corp. of America, Inc. v. Secalt S.A., 196 U.S.P.Q. 312 (T.T.A.B. 1977) (comparing red and yellow strand wire versus red strand wire); Youngstown Sheet and Tube Co. v. Armco Steel Corp., 170 U.S.P.Q. 162 (T.T.A.B. 1971) (comparing grey and orange banded fence post versus orange banded pipe); In re Hodes-Lange Corp., 167 U.S.P.Q. 255 (T.T.A.B. 1970) (comparing a yellow banded ampul and bronze-gold banded ampul; prior registration of bronze-gold banded ampul is “of no consequence” because the PTO color designating lines are the same for yellow and gold).
The issue with this analysis is that it’s not very difficult to compare the color red to the colors red and yellow or the color orange to the colors grey and orange. While the judges take pride in successfully being able to discern the differences, the reality is that there was a whole extra, distinct color in these scenarios. Nevertheless, what is most interesting about these citations is the reasoning behind the court’s decision in the bronze-gold ampul case, In re Hodes-Lange Corp. Specifically, the court says that shade confusion analysis can be conducted “without apparent difficulty” because the PTO has the same designating lines for yellow and gold.
This is an unhealthy reliance on obsolete registration procedures. First, the band wasn’t gold or yellow, the band was bronze-gold, a distinct color. Consumers don’t truly believe that yellow, gold, and bronze-gold are the same thing either. Bronze-gold can be found in any color coding system and if a code was used, then it could easily be seen as a distinct color from both yellow and gold. This could effectively end or, at least, hasten any shade confusion analysis. Instead, the Owens-Corning court relied on a case that relied on an outdated registration process to come to its final decision, which is troubling. The main issue is that when the court relies on old precedent, instead of critically thinking about how their decision impacts trademark owners, they effectively halt the evolution of a system in dire need of development. Still, there are critiques to the implementation of a more modern color coding system and, more specifically, to how it would affect the judges ultimately making shade confusion or likelihood of confusions analyses.
According to Professor J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:45.70 (4th ed. 2012):
“The legal scope of a trademark in color is not defined in scientifically objective terms, like the claims of a utility patent. The test of infringement is not how many Pantone shades the defendant is distant from the senior user's mark, but whether the reasonably prudent customer would be likely to be confused as to source, sponsorship, affiliation or approval. Some courts blithely assume that because there are hundreds of scientifically identifiable shades, consumers can distinguish between them to identify hundreds of different commercial sources by fine variations in shade and that therefore colors will never be “depleted” and no one will be confused. In the author's opinion, this is an unrealistic view which erroneously assumes that the first competitor in a market to establish a primary color such as “red” as its distinguishing color will stand by and not sue (and likely win) when a competitor enters with a different shade of red, the junior user arguing in defense that its “yellowish red” is not confusingly similar to the senior user's “bluish red.” Anyone who has gone shopping in a paint store and been unable to distinguish between fine variations of shades will appreciate the attitude of a judge or juror asked to find that “yellowish red” does not infringe “bluish red.” If the decision maker thinks that the ordinary purchaser or user will see the color as a source indicator, and see them as close enough as to be likely to confuse source or affiliation, then infringement will be found, even though the color shades are not identical.
McCarthy on Trademarks and Unfair Competition, supra at § 7:45.70.
The ultimate test is consumer confusion. What the consumer perceives bears the most importance. Going forward with that fact, the inclusion of a color coding system would limit the amount of cases that would ever reach the point where a likelihood of confusion test would be needed because color codes will create a more succinct application process. The current tests, like functionality or likelihood of confusion, should not be changed to or replaced by a scientific-objective test as Professor McCarthy astutely points out. This would directly conflict with the liberal spirit of our trademark law. However, the coding systems should be used alongside these tests and during the application process to promote efficiency and to achieve the objective of modernizing the system in order to reflect the business practices of today.
1. Qualitex and Beyond
The Supreme Court finally held that color can be protected as a trademark or trade dress in 1995 when they decided Qualitex. Similar to the court in Owens-Corning, in Qualitex, the Supreme Court dealt with the shade confusion analysis by emphasizing the ability of judges to discern minor differences, like in similar wordmarks. 514 U.S. 159, at 167-168; see also Masters Distributors, Inc. v. Pako Corp., 986 F.2d 219, at 223 (8th Cir. 1993). Some examples they gave were judges successfully comparing terms like “Huggies” to “Dougies” and “Cyclone” to “Tornado.” Moreover, the Supreme Court stated that “if necessary” one could go as far as replicating the lighting conditions under which a product is normally sold to assist courts in making these comparisons. Id. at 167-68. Luckily for today’s court’s there are the RGB and CMYK coding systems which can help tackle shade confusion with the click of a mouse.
In regards to color depletion, Qualitex discards the theory wholly, stating that “it relies on an occasional problem to justify a blanket prohibition.” Id. at 168-169. Furthermore, the court states that “alternative colors will likely be available for similar use by others.” Id. (citing Owens–Corning, at 1121). If alternative colors aren’t available, then the “functionality” requirement would prevent any “anticompetitive consequences.” see also Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, at 1532 (Fed. Cir. 1994). (“The functionality limitation on trademark protection properly subsumes any lingering policy concerns embodied in the “color depletion theory”).
Functionality is not the answer to color depletion theory. It alleviates some of the issues that arise and it only addresses the problem collaterally. Functionality is a bar to trademark registration that arises from the Lanham Act itself. §14(3), 15 U.S.C. § 1064 (2013). The rationale for functionality as a limitation to registration is that “there exists a fundamental right to compete through imitation of a competitor's product, which right can only be temporarily denied by the patent or copyright laws.” See Morton-Norwich, 671 F.2d at 1336 (emphasis in original). Since trademark protection is theoretically infinite, the protection of a functional trademark would be in direct conflict with that fundamental right. Id. The functionality doctrine also reflects the individual's right to protect source-identifying symbols for particular goods. Id. at 1337. In sum, the right to protect a product feature serving as a source indicator is limited by “the need to copy [articles which are not protected by patent or copyright]” or “the right to compete effectively.” Brunswick Corp., at 1530-31 (citing Morton-Norwich, at 1339) (emphasis in original).
While color can be functional, color depletion doesn’t only occur when functional colors are at issue. Using the functionality doctrine as the rationale to ignoring color depletion does nothing to prevent further litigation over arbitrary colors being monopolized. Take pink insulation for example. The court in Brunswick Corp. cited Owens-Corning’s “pink” as an example of a color that was completely arbitrary because there was no record of any reason to dye insulation pink or any other color. Brunswick Corp., at 1531. The Owens-Corning company, through the power of the courts, has effectively depleted the color pink from the insulation market and from any other related market that could cause confusion.
Because of the lack of functionality in colored insulation, the same issues past judges dealt with are present in the form of color depletion. There is no standard, other than the eye of a judge, by which to determine the extent of Owens-Corning ownership over the color pink. Now, even if an insulation company decided to dye their insulation an arbitrary, non-functional color, like red or purple, and they attempt to register the color as a mark, there is a serious possibility that their application will be denied. Even though the colors are totally distinct, a court like the one in In re Hodes-Lange Corp. can conduct a shade confusion analysis and find that an ownership of a pink mark is, in essence, an ownership of the whole red-pink-purple spectrum of the color wheel. The issue of color depletion can be more effectively addressed by requiring the use of color codes, like RGB or CMYK, during the application process.
At the low end, there are estimated to be 250-1250 colors. Masters Distributors, Inc. v. Pako Corp., 986 F.2d 219, at 223 (8th Cir. 1993) (citing A. Kornerup & J.H. Wanscher, Color Atlas 7 (1961) (contains the names and samples of 1,266 colors); Kenneth L. Kelly & Deane B. Judd, Color: Universal Language and Dictionary of Names 4 (1976). (Refers to the National Bureau of Standards list of 267 distinctive color designations.)). Even at the low end, the 8th Circuit agreed that “there will always be an option available to a new market entrant.” Id.
At the high end, according to w3schools.com, thanks to advancements in technology “we’re now enjoying far more colourful days in front of our screens.” They say that there are “16 million colours to be precise. 16,384 of which most modern monitors are capable of displaying.” According to this source, the modern computer or phone screen can show over 16,000 colors. see also supra n.3 (Pantone has patented over 5,000 different colors). This means that there are about 1,170 colors for each of the 14 regional and local telephone companies or 6 unique colors for each of the 2,618 four-year accredited universities in America. This highlights that new market entrants will always have a unique color to differentiate their brand.
The fear of color depletion and shade confusion that earlier courts shared is not unfounded. Today, there are monopolies over certain colors. Certain companies like Christian Louboutin, UPS, or Post-it have quite literally removed a color of the rainbow from their competitors. The colors red, brown, and yellow have been stripped from shoe designers, delivery services, and stationary companies, respectively. The only reason this is happening is because of the current practices of the USPTO.
The Trademark Manual of Examining Procedure (Oct. 2017) lays out its color requirements as follows:
Under 1202.05(d) Drawings of Color Marks Required, the USPTO requires color marks to be “visual” and that they should be “depicted in color drawings.” These color drawings must be accompanied by: “(1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement naming the color(s) and describing where the color(s) appear and how they are used on the mark.” emphasis added 37 C.F.R. §2.52(b)(1).
The manual goes onto to require that “[t]he description of the mark must be clear and specific, use ordinary language, and identify the mark as consisting of the particular color as applied to the goods or services.” 1202.05(e) Written Descriptions of Color Marks. Furthermore, if the mark includes gradations, the description should indicate the shade of color in ordinary language, “for example, ‘maroon,’ ‘turquoise,’ ‘navy blue,’ ‘reddish orange.’” Id. Finally, the most relevant part of this section for our purposes states that a description “is required even if the applicant also describes the color using a commercial coloring system.” Id. (emphasis added). This is the USPTO ignoring color coding systems while simultaneously acknowledging their existence and use by registrants. Some of the largest trademark owners like graphic designers, interior decorators, universities, painters, stationary companies, board game creators, and plenty more use these coding systems in their regular course of business and have been for nearly half a century.
As early as 1999, Ferrari entered into an agreement with Unique Sports Products Inc. enjoining Ferrari from marketing tennis racket grip tape using “any overwrap grip material having any blue color lighter than the color designated as 293(c) in the Pantone Color Selector.” Unique Sports Products Inc. v. Ferrari Importing Co., 720 F.3d 1307, at 1309 (11th Cir. 2013).
Today, most companies include a color code like RGB, CMYK, HEX, or PMS code when they describe their trade dress or brand. For example, in Post-it’s Brand Guidelines Quick Reference Guide, they claim that their trade dress is “defined” by these colors: Post-it Brand Yellow (C:0 M:35 Y:100 K:0 / R:255 G:143 B:0), Process Black (C:0 M:0 Y:0 K:100 / R:0 G:0 B:0), Post-it Brand Process Yellow (C:0 M:0 Y:100 K:0 / R:225 G:241 B:0), and Post-it Brand Hero Yellow (C:0 M:5 Y:50 K:0 / R:255 G:218 B:100). There are two important things to note here. First, the codes for both Process Black and Post-it Brand Process Yellow are essentially the color codes for the purest form of black and yellow. If you look at the CMYK code for these colors, you will notice that every color is “0” except for the black and yellow numbers, indicating Post-it is defining its trade dress by the purest forms of the colors black and yellow.
Second, if you go to Post-it’s actual trademark registration you will see that Post-it only has rights to the color “yellow,” exactly where on the yellow spectrum it falls is not being determined by the USPTO, but rather by the company itself. Essentially, Post-it is advertising to its consumers, competitors, and to its employees that its trade dress is defined by these very specific colors. In reality, and legally, they only own the right to use the color “yellow.” Again, it is unclear whether this is the yellow as defined by Post-its guidelines or if it includes the whole spectrum of yellow shades. Unfortunately, the USPTO has given no real clarification to where yellow stops and where a color like orange begins. All one has to do is look at the two versions of yellow that Post-it uses to define its trade dress to see that there is a discrepancy between what Post-it thinks it owns and what the USPTO thinks it owns.
Certain case law may suggest that a registration for a certain color includes all the shades of such a color. In re Cook Medical Technologies LLC, the TTAB decided that “registrant's ‘blue’ mark is not limited to particular shade, and thus covers all shades of blue.” This subsequently became a factor in barring registrant’s competitor from using a teal color mark for its guiding sheaths. 105 U.S.P.Q.2d. 1377 (T.T.A.B. 2012). The examining attorney is quoted in the opinion as stating that teal and blue are “legally identical.” Id. at It’s important to note that the applicant in this case was producing guiding sheaths, while the registrant had a blue mark for catheters. These are two different products, but the blue mark seemingly extends across the medical supply industry. This is the color depletion that is discussed in the early color cases. If the colors were coded during the application process, the TTAB would have seen that teal and blue are different shades and not “legally identical.” This could have been a determining factor in the case or, at the very least, could have helped the board make a fairer assessment.
Post-it is not alone in using color codes to define its brand, trade dress, or identity. Many, if not most, companies, organizations, and universities use these codes to define their brands. Florida International University (FIU) defines it brand using the colors FIU Blue (C: 100 M:87 Y:42 K:52) and FIU Gold (C:26 M:46 Y:100 K:6). However, their actual registration with the USPTO gives them the right to use the colors “dark blue” and “gold.” Some schools, like University of Texas, have gone on the offensive to protect their colors. In 2010, the school shut down two mobile apps because of their use of “burnt orange” and the mention of “Texas” in their names. On their official website the University of Texas defines this color as C:0 M:65 Y:100 K:9.
The legislative history of the Lanham Act makes its objective to have a “more liberal” registration and to dispense of “mere technical prohibitions and arbitrary provisions” in an effort to modernize trademark statutes to “conform to legitimate present-day business practice.” Owens-Corning (citing In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1360 (C.C.P.A. 1973)); S. Rep. No.1333, 79th Cong., 2d Sess. (1946) in U.S. Code Cong. Service, 79th Cong., 2d Sess. at 1274-1278 (1946). The Lanham Act’s objective of modernizing the system is currently failing. The RGB or CMYK system, or any commercial coding system, could alleviate a lot of the issues surrounding color in trademarks and color marks and would help bring the USPTO up to speed with the practices of the business and people that register with them. In adopting a new method for registering colors, the USPTO could use any of the current coding systems, a combination of them, or they could create their own. Since different codes are widely-used for different purposes, perhaps the USPTO can adapt their system for the four most popular systems – RGB, CMYK, HEX, and PMS. When an applicant’s product is intended to be printed then they can use PMS or CMYK and if they intend their logo to be displayed on computer or TV screens, then they can use RGB or HEX, or some form therein.
In the European Union, Article 4 of Council Regulation (EC) No. 40-94 of 20 December 1993 states that any community trademark may consist of "any signs capable of being represented graphically...provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In Libertel Groep v. Benelux Merkenbureau (case C-104/01) dated May 6, 2003 the ECJ repeats the criteria from Sieckmann v. German Patent Office (case C-273/00) that graphical representation preferably means clear, precise, self-contained, easily accessible, intelligible, durable and objective images, lines or characters. This definition has been held to encompasses color marks. Furthermore, and interestingly, an applicant for a community trademark or a national trademark may choose to define their color trademark using an international color code such as RAL or Pantone. However, like in the U.S.A and the rest of the world, a color trademark will primarily only be registered after the owner has proven inherent (or enhanced) distinctiveness through use (or secondary meaning).
In China, though single color marks have not been protected yet, marks that are a combination of colors are protectable. For these color combinations, the Chinese Trademark Office examination standard requires the marks to consist of two or more colors. Applicants in China must clearly state in the application that they are applying for color marks and provide color specimens. Id., supra n. 19. The colors should be named by reference to Pantone numbers.
According to the Trademark Act of Japan (Act No. 127 of 1959, as amended), single color marks are registrable in Japan as “color marks per se.”. An application for a color mark shall state that the proposed mark is a color or color combination. Id., at Art. 5, ¶ 1. For a single color mark, the applicant should provide either: “(i) a drawing or a photo indicating the applied-for color, or (ii) a drawing or photo indicating the place where the color is used in the relevant product with the object appearing in dotted lines.” Id. Further, and like in China, the applicant should provide a description of the color by indicating the RGB or PMS system. supra n. 20.
As evidence by the European Union, China, and Japan, a trademark system with color codes can function in the most sophisticated countries and communities. The U.S.A. was the first country to adopt color marks and, as a nation, has trail blazed the road for modern intellectual property jurisprudence. However, in this field of color registration the USA is falling behind its counterparts overseas. In order to maintain its legacy as the premier, progressive powerhouse of intellectual property, the United States needs to take definitive steps towards implementing these codes into the registration process. Failure to do so could even lead U.S. companies to seek protection for their colors elsewhere.
3. How RGB/CMYK Codes Can Address Shade Confusion and Color Depletion
In Master Distributors Inc., the court had to assume that although a complaint referred “generally to ‘the color mark blue’ and ‘use of the color blue,’” the plaintiffs “intended to include only the particular blue shade of its Blue Max tape.” 986 F.2d 219, 221 n.2 (8th Cir. 1993). A court could leave less up to assumption if the color shade was coded under a RGB or CMYK coding system. In order to determine the intended color, all that would be required is a quick glance at the registration which, under this proposed system, would have the exact color code for the particular shade of blue.
Before Qualitex, the courts that opposed color marks conformed to the idea that shade confusion could only be resolved through litigation. Nutra-Sweet Co., 917 F.2d 1024, at 1027 (7th Cir. 1990). The court in Nutra-Sweet Co., relied heavily on Life Savers Corp. v. Curtiss Candy Co., 182 F.2d 4, 9 (7th Cir. 1950) and the Owens-Corning dissent. However, as previously mentioned, solving shade confusion through litigation is inefficient and costly. This wastes the courts and the parties time when shade confusion can be solved more easily with the use of RGB or CMYK coding systems. If the USPTO gave protection to a certain code like Post-it Brand Yellow (C:0 M:35 Y:100 K:0 / R:255 G:143 B:0) then that would effectually, and legally, be the color tied to its trade dress. This may sound like the scientific-objective approach Professor McCarthy warned about, but to be clear, these color codes should act primarily as an aid, not a replacement.
A criticism I could anticipate with this system stems from the hypothetical case where a company changes one digit of the code and pleads distinction. For example, what would happen if another stationary company started producing their own yellow sticky notes with a CMYK code of C:0 M:36 Y:100 K:0 or R:256 G:143 B:0 (one digit away from Post-it Brand Yellow). An appropriate solution to this issue would be giving the trademark owners the right to a certain spectrum, maybe within five, ten, or even twenty digits for each color value. Issues like this one could even be left to a case-by-case analysis with the coding systems merely acting as a reference sheet for judges. This way, de minimis changes in shades would still qualify as infringement if they are likely to confuse the consumer.
While there may be a hesitation to depart from the long-standing tradition of using word descriptor’s, there is evidence that the USPTO is already bending towards a color coded world. In their registration for the color brown, UPS described their mark as follows: “[t]he mark consists of the color chocolate brown, which is the approximate equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms. The mark consists of the color brown alone.”
UPS was granted that mark in 2004, a year after the requirements for colors changed in the Trademark Manual. But as early as 1995, UPS held marks that “consists of the color brown applied to the vehicles used in performing the services.” This mark is still live. Even though the shade of brown hasn’t changed since 1995, the definition, or description, of brown has. Because of this, UPS thought it wise to include the Pantone code in their registration. When tasked with the job of describing a color, it only makes sense to use the code. Could you describe what “brown” looks like? Describing colors with words is complex, confusing, and nearly impossible without using other colors or the color itself. That’s why color coding systems were created, to decrease the confusion and standardize the practice of using color in fashion, design, and business.
Instances like the UPS application will continue to pop up in conflict with examining procedure until the USPTO has updated its system to include color codes. Registrants will continue to seek out their specific colors as defined by these codes and it is up to the USPTO to facilitate a process that best serves them. Even though UPS hasn’t had any issues with its mark, I’m sure they are confident that their specific chocolate brown (PMS 462C) as described in its application, will be fully protected.
This is further supported by cases where judges have issued injunctions against the use of a certain color code. In a recent case, T-Mobile US, Inc., et al. v. Aio Wireless LLC, 991 F. Supp. 2d 888 (S.D. Tex. 2014), a district court granted T-Mobile’s request for a preliminary injunction against the defendant’s “use of large blocks or swaths of Pantone 676C and confusingly similar shades in its advertising, marketing, and store design.” Id. at 932. T-Mobile acquired the right to use the color “magenta,” but, in an effort to give T-Mobile the remedy they were truly seeking, the court took the logical step further and enjoined the defendant from using Pantone 676C, the actual color used by T-Mobile. This provides T-Mobile with the remedy they sought and clarity to the defendant about what color they are barred from using. Also, take notice of the “and confusingly similar shades” portion of the holding. Id. This is an effort at harmonizing the traditional approach to colors with the modern reality of how colors are used and defined. With a push towards modernization, headed by the USPTO, judges can continue to balance the two approaches to ultimately come to the fairest and most just decision.
Furthermore, even with the implementation of a coding system, there will still be the requirements of non-functionality and secondary meaning to alleviate overbroad limitations like the ones that exist today. see In re Gen. Mills IP Holdings II, LLC, 124 U.S.P.Q.2d 1016 (T.T.A.B. 2017) (denying Cheerios protection for the color yellow because it was not inherently distinctive in the cereal); In re Hogdon Powder Co., 119 U.S.P.Q.D. 1254 (T.T.A.B. 2016) (color white is not inherently distinctive for gunpowder). These decisions would continue regardless of the courts and the TTAB using color codes instead of word descriptors. For example, under this proposed system, a registrant would be pressed to get protection for gun powder along the white-grey-black spectrum, which would be defined by the USPTO. Ultimately, if any of the colors fell within that spectrum, protection would likely be denied because likelihood of confusion and functionality will be presumed high while likelihood of inherent distinction or secondary meaning will be presumed low.
While this system of registering a range of codes may come across like a monopoly of a portion of the rainbow or a path to color depletion, this system would actually narrow the amount of a particular color a trademark registrant could own. Instead of retaining the rights to a whole spectrum of red, like Christian Louboutin, a trademark registrant can register a specifically defined section of red, or even a defined section of “lacquered red”, that is codified in a ranged-code system. Christian Louboutin S.A., at 211. This limitation on color ownership would benefit business owners as well because now they would actually have the rights to the specific colors they have used for years to define their identity. Why should the USPTO give FIU the rights to the whole dark blue spectrum when they really only want FIU Blue (C: 100 M:87 Y:42 K:52)?
As early as 2004, arbitrators have acknowledged the existence of color codes and have used them as aids. In Register.com Inc., the tribunal recognized that “both Respondent's sites at <website-register.com> and <webpage-register.com> used the same exact distinctive beige background color (expressed in hexadecimal format as “F7F2D0” or in RGB format.” 70 U.S.P.Q.2d 1351 (Nat'l Arb. Forum 2004). They used this fact to grant the relief sought by the complainant, specifically that Respondent’s conduct (including the use of the same RGB code) constituted bad faith. Now, in 2018, it is time for the USPTO to embrace the objectives of the Lanham Act and go from black and white to technicolor to RGB/CMYK.
The Lanham Act is as American as apple pie and the liberalism that defines it. An honorable attempt to modernize trademark law has, in the past six decades, slowly grinded to a halt. It wasn’t until 2003 that the USPTO left the black and white world of the 1950’s for the Technicolor world of the 1970’s. It would benefit all trademark owners, attorneys, judges, and consumers if it does not take until 2033 to enter the RGB/CMYK world of today. Judges must get out of the rabbit hole that current color jurisprudence has dug. By continuing to rely on obsolete precedent and downplaying serious, living concerns as if they are things of the past, we have entered a world where color is free until a company snatches it up and lays claim. By modernizing the application system, judges and trademark examiners will be able to make more educated and comprehensive decisions that reflect the business practices of today.
 Re Hanson's Trademark, L. R. 37 Ch. Div. 112
 Eva Kiss, What’s the difference between PMS, CMYK, RGB and HEX?, Neglia Design, https://negliadesign.com/ask-a-designer/whats-the-difference-between-pms-cmyk-rgb-and-hex/.
 Pantone Colors Explained, https://www.pantone.com/color-systems-intro.
 Tiffany & Co.’s famous “Tiffany Blue” is a private custom color by Pantone (PMS number 1837). The number is derived from the year of Tiffany's foundation. As a trademarked color, it is not available to the public and is therefore not printed in the Pantone Matching System swatch books.
 “Brown,” Wikipedia, https://en.wikipedia.org/wiki/Brown.
 see In re General Petroleum Corp. of California, 49 F.2d 966, (CCPA 1931) (Rejecting application to register the color violet for gasoline); In re Security Engineering Co., Inc., 113 F.2d 494 (CCPA 1940) (Rejecting application for blue-and-aluminum color for oil well reamers).
 see also Clifton Mfg. Co. v. Crawford-Austin Mfg. Co., 12 S.W.2d 1098 (Tex.Civ.App.1929) (Enjoining defendant from copying plaintiff’s distinctive reddish-brown color for tents).
 Hex code for bronze-gold is #a56406. (rgb.to, http://rgb.to/keyword/5253/1/bronze-gold).
 see Brunswick Corp., at 1531 (finding the color “black” is aesthetically functional for outboard boat engines because of competitive need).
 Emma Davies, How many colors are there?, Speckyboy (Dec. 22, 2011), https://speckyboy.com/how-many-colours-are-there/.
 Trademark Manual of Examining Procedure October 2017 § 1202.5 Color as a Mark, https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e1975.html
 Post-itÒ Brand Guidelines Quick Reference Guide, (Sept. 2015), http://www.3mproductivity.com/IDCSalesCentral/SOSD_Brand_Guidelines_QuickReferenceGuides_02.29.16.pdf.
 U.S. Trademark Application Serial No. 75/610,586 (filed Dec. 22, 1998).
 Brand Standards, Fl. Int. U., https://brand.fiu.edu/brand-standards/.
 U.S. Trademark Application Serial No. 77/578,513 (filed Sept. 25, 2008).
 Wells Dunbar, Texas Trademark War: UT v. iTexas, Austin Chron. (Feb. 12, 2010), https://www.austinchronicle.com/news/2010-02-12/960952/; Mike Masnick, University of Texas Claims Trademark Over 'Texas'; Wants Useful iPhone App Blocked, Techdirt (Feb. 16, 2010), https://www.techdirt.com/articles/20100216/1034448184.shtml.
Brand Guidelines, https://brand.utexas.edu/identity/color/. (“Colors: Fall in love with burnt orange all over again and take advantage of a new and expanded palette that helps bring it to life”).
 RAL is a color matching system used in Europe that is created and administrated by the German RAL gGmbH.
 Regulations for the Implementation of Trademark Law, Chap. II, Art. 13 (2015).
 John Froemming, et al., Lending Color to Trademarks: Protection and Enforcement of Color Marks in the U.S., EU, China and Japan, Int. Trademark Assoc. (July 1, 2015), https://www.inta.org/INTABulletin/Pages/ColorMarks_in_US_EU_China_Japan_7012.aspx.
 U.S. Trademark Application Serial No. 76/408,109 (filed June 20, 2002).
 U.S. Trademark Application Serial No. 76/039,323 (filed Dec. 26, 1995).
Damian B. Hunt is a recent graduate of Florida International University College of Law in Miami, Florida. During his time at FIU, he earned a certificate in Intellectual Property for successfully completing IP-focused courses such Trademark Law (domestic and international), Copyright Law, and Fashion & Design Law. Damian also served as Public Relations Officer for the Intellectual Property Student Association. Currently, he is a practicing attorney in St. Augustine, Florida.