Claiming Color as Part of a Trademark
By: David Breiner
A trademark is a symbol used in commerce to identify a source of goods and services. This symbol often takes the form of a logo, word(s), and/or phrase. Trademark protection comes from using a trademark in commerce. However, trademark protection may be enhanced by filing the trademark with the United States Patent and Trademark Office (USPTO). A typical trademark application requires an applicant to submit a specimen of the trademark along with the description of goods and services the trademark is used with. A trademark application also requires the applicant to identify whether color is a claimed feature of the trademark. Whether or not color should be claimed depends on the importance of the color used in the trademark. If the color is important it may make sense to claim color as a feature of the trademark, however, if color is not particularly important, color should not be claimed.
Generally speaking, once a trademark registers with the USPTO the trademark owner is required to file renewal papers. In the United States, a renewal period is every ten years. Part of the renewal process involves submitting evidence the registered trademark has been continually used in commerce during the renewal period. A trademark for which color is claimed requires that the trademark retain its color scheme throughout the renewal period. If the owner changed the trademark’s color scheme during the renewal period, the change in color scheme may result in abandonment of the trademark, thus ruining the trademark owner’s rights to the trademark. As such, an owner must be careful when electing to claim color as a feature of their trademark. This is true not only in the United States, but other countries as well.
To be sure, many trademark owners elect to claim color as a feature of their trademark. Federal Express, Starbucks, Google, Subway, and Apple all have trademark registrations in which color is claimed. However, each of these companies also obtained protection for their trademark without color. Furthermore, each also sought to protect their color scheme only after securing protection in which color was not claimed as a feature of the trademark. Thus, if a trademark owner wishes to protect their trademark in commerce, they may want to follow the lead of these companies and seek protection of their trademark without claiming color first, then seek to protect the color in a later filed application. That way, they preserve the flexibility of changing the color scheme of a trademark after the trademark registers.