By David Kramer and Ashley Green (Washington DC)

In September, Pantone LLC, an international authority on color and provider of a standardized color system for the design industry, published its semi-annual Fashion Color Report for Spring 2016. Released to coincide with New York Fashion Week, the report features an overview of the anticipated top ten colors in fashion for Spring 2016. The shades highlighted in the report range from a vibrant, high-energy “Fiesta” red to a calming “Serenity” inspired by a clear blue sky. To read the report, please click here.

While fashion designers and marketing professionals agree that colors have the power to transform the look and feel of a product, whether it be shoes or candy wrappers, courts have long struggled to identify the circumstances under which a color alone can serve as a source identifier or trademark. The nature of the fashion industry itself, where a design element such as color can serve an essential aesthetic function, further complicates the matter under US law.

Undoubtedly color can serve as a source indicator under the right circumstances. For example, when a color is used as a symbol only, and serves no functional purpose, the color can serve as a trademark once it has acquired ‘secondary meaning’ in the marketplace. Under US law, this means that if the color at issue is not essential to the use or purpose of the product, and does not affect the cost or quality of the product, the color may be protectable upon a showing of acquired distinctiveness.

However, in situations where a color is chosen primarily for aesthetic reasons, the question becomes much more complicated. Because aesthetics can significantly impact the commercial success of a product, these elements are often unprotectable. That said, in limited circumstances aesthetic elements such as color may be entitled to trademark protection. When assessing the registrability of elements such as color, the main considerations are whether granting a single entity exclusive rights in the color would have a significant negative impact on competition, and, if not, whether the element has acquired secondary meaning. Not unexpectedly, this analysis can be complicated, particularly in the fashion context, because it can be difficult to distinguish between a merely decorative design feature and one distinct enough to actually serve as a source identifier.

Because color choices are often aesthetic in the context of fashion and design, in the past courts have suggested that protection of color in the fashion industry in particular is not possible. While subsequent high-profile cases have proven this suggestion to be false, there is little doubt that the fashion industry presents unique considerations when it comes to colors.

That said, when considering whether a color may potentially be protectable, it is important to keep the following questions in mind:

  • Have you used the color consistently in connection with specific design elements?
  • Have you made longstanding and exclusive use of the color in this way?
  • Is the color likely to be linked with your product in the mind of consumers?
  • Have your product promotions featured the product?
  • Is the product a commercial success?
  • Has media coverage of the product made reference to the color?
  • Have any third-parties attempted to use a similar or identical color in a similar way?

If you answered “yes” to the majority of these questions, it could make sense to take a closer look at whether it may be possible to obtain trademark rights in the color at issue.

Thinking creatively when selecting trademarks and branding strategies is critical in any industry. In the fashion industry, each season brings with it a new color palette intended to catch the eye of consumers. While powerful, these seasonal palettes are fleeting. By identifying, promoting, and protecting non-traditional trademarks such as color, you can create an iconic, lasting image of your brand that consumers will be passionate about for seasons to come.