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Return of the Color Trademark

Return of the Color Trademark

Would that hot chocolate taste better in an orange cup? And what the heck does that have to do with trademark law?

I’ve written in the past about the concept of color as a trademark: here’s a post about a dispute over Gold Gloves in baseball, and here’s one that addresses the subject more generally. Since the issue keeps coming up, and it’s related to the issue of trademark functionality (which I discussed in this post about Hershey bars and Pepto-Bismol), I wanted to circle back to it.

Have you ever noticed that scientists keep on studying things? Well here’s one of them: Gizmodo reported that a recent article in the Journal of Sensory Studies (which is probably less exciting than you might think) shows that hot chocolate tastes better in an orange or creme-colored cup. White and red cups do nothing to enhance the flavor.

From the Gizmodo article:

We already knew that the color of food itself may affect our perception of taste. A spicy meal, for example, will be perceived as hotter than the same food if it’s more red. We also knew that containers themselves may affect the flavor but the relationship is still not well understood.

They mentioned a few other findings along these lines:

The same team has conducted other experiments that confirm all this. One showed that strawberry mousse tastes more intense and sweet in a white plate as opposed to a black one. Soda and lemon-based beverages are more refreshing and lemony in a blue can, while those in pink vessels are perceived as sweeter (which explains Tab). Coffee is affected too; a brown packaging makes its taste stronger and more aromatic, while red makes it less strong and yellow or blue make it smoother.

Trademark blogger Rebecca Tushnet mentioned a similar article in the New York Times, concerning the color of pills. It turns out that changing the color of a pill can reduce the likelihood that the patient will continue taking the medication.

All of this goes to show that, while colors can be protected as trademarks, if scientists continue coming up with these kinds of findings, it may become harder to do so over time. This is because of the “Functional Trademark” concept – from my post about Hershey bars:

The term “Functional Trademark” is a bit of a misnomer, because elements that are functional are actually not eligible for trademark protection.

Features or shapes that are considered “functional” are those that have a utilitarian purpose. While there is no one definition of functional, one commonly applied is “a product feature essential to the use or purpose of the article or affects the cost or quality of the article.” Essentially, the property of having wheels on a car or soles on a shoe cannot be a trademark because cars and shoes work more efficiently with these components (as opposed to without them).

Functional features are not eligible for trademark protection for two policy reasons. First, it ensures that competitors can use features that are necessary in order to compete effectively. (Imagine Ford trying to compete with Chevy if Chevy had a trademark on wheels.) Second, functional features covered under patent law. Utility patents cover items that are of general usefulness. Without the ban on trademark functionality, trademark law would be available as a shortcut around this component of patent law.

So, a color (or colors) may be able to serve as a trademark as long as it has no function. Or is that exactly right? Ms. Tushnet asks, “[F]or how many people need a feature be functional in order to count, legally speaking?” We don’t really know, and this is one of those fun areas of law where every case is going to be different, so there’s no way to really draw a bright line.

There is, however, one tip that I can provide: if you ever want to try to claim trademark protection for a color, be sure to never, ever, ever suggest in your marketing or advertising materials that the color has any sort of function. Does the green tint in your sunglasses help block harmful UV rays? Well, then it can’t be a trademark. Will kids be happy to swallow this medicine because of its fun bubblegum color? No trademark for you. This is one of those situations where the marketing/advertising and legal sides of a business need to be fully in sync from Day 1. There’s no going back once you’ve shown that your color serves a real-world purpose and isn’t “merely ornamental.”

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