1 1 1 AIPLA Firm Logo American Intellectual Property Law Association COLOR TRADEMARKS CIPA/ITMA Meeting London, England Joseph A. Calvaruso Orrick, Herrington & Sutcliffe LLP March 10, 2014

2 2 2 AIPLA Firm Logo Background any word, name, symbol, or device, or any combination thereof... (1)used by a person... to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown 15 U.S.C. § 1127.

3 3 3 AIPLA Firm Logo Background (contd) Traditional Rationale For Excluding Color As A Trademark: color depletion adequate protection of color as an element of a design concern over shade confusion functionality

4 4 4 AIPLA Firm Logo Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) The USPTO registered the plaintiffs color mark, but when suit was brought to enforce the mark against a competitor, the courts initially held the registration to be invalid. The Supreme Court reversed the decision.

5 5 5 AIPLA Firm Logo Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (contd) [T]he language of the Lanham Act describes [the universe of things that can qualify as a trademark] in the broadest of terms... [s]ince human beings might use as a symbol or device almost anything at all that is capable of carrying meaning, this language, read literally is not restrictive. When a color meets ordinary legal trademark requirements… no special legal rule prevents color alone from serving as a trademark. If the color has some function in connection to product, it is not protectable; the color must be available to competitors.

6 6 6 AIPLA Firm Logo Color Mark Registration

7 7 7 AIPLA Firm Logo Color Mark Registration (contd)

8 8 8 AIPLA Firm Logo Acquired Distinctiveness – Secondary Meaning Secondary meaning requires proof that the consuming public associates the mark with a single source. It is not necessary to prove that the relevant public can identify the source of the product by name.

9 9 9 AIPLA Firm Logo Proof of Secondary Meaning Factors For Proving Secondary Meaning Include: Direct evidence testimony from individual purchasers consumer surveys showing that the mark is associated with a single source

10 10 AIPLA Firm Logo Proof of Secondary Meaning (contd) Factors For Proving Secondary Meaning Include: Indirect evidence amount of advertising expenditures types and extent of advertising length, manner, and exclusivity of use sales success unsolicited media coverage of the product

11 11 AIPLA Firm Logo Proof of Secondary Meaning (contd) Owens Corning* Factors OC advertised its color pink mark for home insulation for about 30 years Over $42 million was spent on advertising (Super Bowl, World Series, U.S. Open, prime time TV) The advertising emphasized the pink color of the product (Pink Panther) *In re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

12 12 AIPLA Firm Logo Secondary Meaning Not Found Red Swiss Army Knife Case Evidence showed that for nearly 40 years at least three other companies marketed red-handled multifunction knives, some of which had become known to consumers as Swiss Army knives. Red as applied to multifunction pocket knives does not serve to identify plaintiff as the single source of the product. Red does not distinguish plaintiffs product from those of its competitors. Forschner Group, Inc. v. Arrow Trading Co., Inc., 124 F.3d 402 (2d Cir. 1997)

13 13 AIPLA Firm Logo Feature, If Functional Trademark The Courts have held that a feature is functional if: ̶ it is essential to the use or purpose of the product, or ̶ it affects the cost or quality of the product and would put competitors at a significant non- reputation related disadvantage.

14 14 AIPLA Firm Logo Color Having Utilitarian Function Yellow or orange for safety signs. TMEP § (b). Color of medication identified particular medication identified dosage Shire U.S. Inc. v. Barr Labs, Inc., 329 F.3d 348 (3rd Cir. 2003)

15 15 AIPLA Firm Logo Color That Is Merely Ornamental Or Decorative Is Not Protected USPTO Factors –Would consumers perceive the color as a trademark or just as a decorative feature? –Are the same or similar colors used by competitors in the industry? indicates color is ornamentation rather than source indicator –Is there evidence of acquired distinctiveness ?

16 16 AIPLA Firm Logo Aesthetic Functionality - Fashion Whether allowing one designer to monopolize a single color having aesthetic appeal used in a particular manner puts competitors at a disadvantage.

17 17 AIPLA Firm Logo Christian Louboutin v. Yves Saint Laurent, 778 F. Supp. 2d 445 (S.D.N.Y. 2011)

18 18 AIPLA Firm Logo Christian Louboutin v. Yves Saint Laurent, 778 F. Supp. 2d 445 (S.D.N.Y. 2011) District Court Denied Preliminary Injunction: [W]hatever commercial purposes may support extending trademark protection to a single color for industrial goods do not easily fit the unique characteristics and needs the creativity, aesthetics, taste and seasonal change that define production of articles of fashion. [I]n fashion markets, color serves not solely to identify sponsorship or source, but it is used in designs primarily to advance expressive, ornamental and aesthetic purposes. The law should not countenance restraints that would interfere with creativity and stifle competition by one designer….

19 19 AIPLA Firm Logo Christian Louboutin v. Yves Saint Laurent, 696 F.3d 206 (2d Cir. 2012) Second Circuit Decision –Reversed the district court, holding that a single color can serve as a trademark in the fashion industry so long as secondary meaning is established. –Louboutin established secondary meaning in the marketplace, but only when the red shoe contrasts with the remainder of the shoe.

20 20 AIPLA Firm Logo Second Circuit Mandate to USPTO Pursuant to 15 U.S.C. § 119, the Director of the United States Patent and Trademark Office shall make appropriate entry upon that Offices records to reflect that U.S. Trademark Registration No. 3,361,597 held by Christian Louboutin and dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color of the adjoining (upper) portion of the shoe.

21 21 AIPLA Firm Logo USPTO Proposed Amendment The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the upper). The dotted lines are not part of the mark but are intended only to show placement of the mark.

22 22 AIPLA Firm Logo Louboutins Proposed Amendment The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe. The dotted lines are not part of the mark but are intended only to show placement of the mark.

23 23 AIPLA Firm Logo What Brand Owners Can Do to Protect Themselves Show that consumers believe the goods bearing the mark come from a single source. Show that consumers believe that trademark owner has sponsored or approved of the infringing use. Emphasize the color in promotional materials. Collect customer complaints of infringing products. Collect unsolicited references to the color mark in the media.

24 24 AIPLA Firm Logo Thanks for your attention! Questions? Joseph A. Calvaruso Partner Orrick, Herrington & Sutcliffe LLP 51 West 52 nd Street New York, N.Y (212) (914) Joseph A. Calvaruso