February 12, 2012

From Jewelers’ Boxes to POST-IT® Notes: Making Your Brand A Horse of a Different Color

Seller Beware: Consumer Protection Insights for Industry

By selling a product in a color that buyers associate uniquely with your company, you can gain a distinct advantage in the marketplace. This principle is not new. From light blue jewelry boxes (Tiffany) to canary yellow POST-IT® notes (3M), to pink fiberglass installation (Owens Corning), manufacturers have been creating single color brands for decades. The recent hubbub over Christian Louboutin's claim to have the sole right to sell red-soled high fashion shoes has sparked anew interest in this subject. See Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.

Here are some practical tips for a company that has its eye on that particular, unique color as its next brand:

  • Do not be too ambitious. The issue of whether part (rather than all) of a product that is a single color may constitute a brand is unsettled (Christian Louboutin). Select a complete product, in one unique color, and claim that as your own.
  • Make sure the color is consistent. If you sell a line of pink soaps, for example, make sure they are all the same shade of pink before claiming your pink brand.
  • Be prepared to show that the public associates the color exclusively with you or your product. Sales and advertising evidence emphasizing the color may be persuasive. If others are selling the same or closely similar products in the same color, this may doom your efforts. For instance, a "sea" of lemon yellow candy packages in the marketplace will not set you apart from other candy sellers.
  • Be prepared, if challenged, to offer a survey showing that purchasers identify your color exclusively with you or your product. A comprehensive survey should measure consumer recognition of your color against consumer recognition of other colors for the same product, all without any other source markings (such as brand names). This type of survey could be expensive, however, so even consumer statements without the aid of a formal survey could be useful.
  • Do not select a color that naturally results from the manufacturing process.
  • Choose a color that is not functional and does not give you an actual competitive advantage over others. If your competitors need to use the same color because it is essential to the use or purpose of the product, or affects its cost or quality, you cannot co-opt it as yours. See Qualitex Co. v. Jacobson Co. For example, no single company can claim rights in black for outboard boat motors, because black is compatible with many boat colors and will be attractive to multiple skippers. See British Seagull Ltd. v. Brunswick Corp.
  • Give your color a name. The "canary yellow" POST-IT® notes is a good example. Consumers will remember it and associate it with your company's product.

© Arnold & Porter Kaye Scholer LLP 2012 All Rights Reserved. This blog post is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.

Subscribe Link

Email Disclaimer