A material in part or in whole. A single

A color trademark, as
the name implies, is a trademark that consists of color, including single color
trademark and color combination trademark. Not just a color scheme that is
claimed as part of a design or logo mark, but the color itself.1 A color trademark is
different from a coloured trademark. When a color combines with words and
figures, an ordinary word or figurative mark of a specified color forms. No
legal provisions have been made for the fact that whether a color trademark
shall have a fixed shape, i.e. whether a color trademark is subject to a
specific shape. In the opinion of the author, a color trademark is generally
used together with goods, and covers goods or its packaging material in part or
in whole. A single color trademark consists of a color without a fixed shape.
If a color is fixed in an outline, a figurative trademark, other than a single
color trademark, will form.  In the same
time, colour is limited to the particular object, but the object is not claimed
to define the boundaries of the mark.2 Applications showing the
mark in a dotted outline to indicate that the object does not form part of the
trademark, have been accepted.3 For instance, a chocolate
producer  purples its milk chocolate bars
and thus obtains the right of single purple trademark which is only limited to
the bars of the producer other than all chocolates or candies and shall not
prohibit its competitors purpling other chocolates. Therefore,
a color
trademark has no fixed shape, but the protection of which through registration
must be subject to a particular position.

 

Protecting a color as
a trademark achieves an appropriate balance
between maintaining free competition and preventing unfair competition.4 However, the traditional
rule is that a color, per se, is not capable of appropriation as a trademark.5 Therefore, it is necessary
to have a full understanding of the registration of single color trademarks from
theoretical and practical point of view through a comparative study.

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According to the
development history of the Trademark Law of the U.S., we find that before the
United States Supreme Court specifically entered a judgment that a trademark
that consists of color alone may be protected through registration, the  mere color rule was adopted, that is color
alone could not be registered as a trademark in the United States.6 This is also known as the
color per se rule, that is, in the event of combination with the elements like
words and figures, color may be protected by the trademark law, but color alone
is not subject to protection. This rule played an absolutely leading role in
relation to color trademarks under the Trademark Law of the U.S. For this, some
scholar considered “Over the long history of United
States trademark law, few principles were as ‘black
and white’
as the prohibition against protection for color alone.”7

 

a.     Color Depletion

Professor
McCarthy asserts “A color, per se, is not capable
of appropriation as a trademark. That is, one seller cannot feature a certain
color and claim that ‘This is my Color. No one else in
the trade can use this color.'”8 It is premised on the belief
that to give one manufacturer the exclusive right to use a given color for its
product(s) would be anti-competitive because new entrants into the market place
would be deterred by the resulting marketing limitations placed upon their product(s).9

 

The
theory of “color
depletion”
was derived from the case of Diamond Match Co. v. Saginaw Match Co., When asking the
plaintiff whether the color at the end of match was protected by the trademark
law, the court considered:

 

“The primary colors,
even adding black and white, are but few. If two of these colors can be appropriated
for one brand of tipped matches, it will not take long to appropriate the rest.
Thus, by appropriating the colors, the manufacture of tipped matches could be
mo­nopolized by a few vigilant concerns, without any patent
whatever.


If, by
appropriating two colors for each brand, it could monopolize them, it would
soon take all the colors not in use by the complainant, and thus cover the
entire field at once.”10

 

Since
then, the U.S. has been adhering to the theory. In Leschen & Sons Rope Co.
v. Broderick & Bascom Co., the US Supreme Court argued that: “Whether mere color
can constitute a valid trademark may admit of doubt. Doubtless it may, if it be
impressed in a particular design, as a circle, square, triangle, a cross, or a
star. But the authorities do not go farther than this.”11

 

In
Campbell Soup Co. v. Armour & Co., the Third Circuit Court of Appeals restated
the color depletion theory.12 The court concluded that red
and white label in the packaging of its food products cannot be monopolized.

 

Until
the case in which Owens-corning13 was involved was filed in
1985, many circuit courts insisted that no single color trademark was protected
by the trademark law. In Owens-corning, the United States Court of Appeals for
the Federal Circuit concluded that the color “pink”
does function
as a trademark for OCF’s fibrous glass residential
insulation. The court held that color per se may be the subject of trademark
protection.14
Finally, in 1993, the Eighth Circuit in Master Distributors, Inc.v. Pako Corp.15 addressed the
inconsistency and confusion by urging courts to abandon their attempts at
creating special rules for color per se and instead treat color the same as
other marks.16

 

In
1995, the United States Supreme Court refuted the theory of “color
depletion” in the case in which Qualitex17 was
involve.
Qualitex Company has for years colored the dry cleaning press pads
it manufactures with a special shade of green gold. The court stated
that the “depletion” argument is unpersuasive,
however, largely because it relies on an occasional problem to justify a
blanket prohibition. When a color serves as a mark, normally alternative colors
will likely be available for similar use by others.18

 

First,
there are thousands of color created under the condition of modern technology,
among which hundreds may be recognized by people. For most of producers, these
colors are enough and will not be depleted. Undoubtedly, in extremely special
circumstances, there are limited colors for competitors to use on some goods or
services, and a color allowed to be registered as a trademark will be
monopolized by a producer, making it impossible for its competitors to find a
substitute and leaving them at a disadvantage. However, this happens in extreme
cases, and a great deal of colors are available in general fields. That’s
why it is unreasonable to fully deny the registration of a single color due to such
extreme cases.

 

Second,
instead of monopolizing a color, a color trademark allows other merchants to
use the color in a manner that differs from that in which the person who owns
the prior right does. To register a mark as a trademark, the category of goods
or services to which it applies must be specified for protection in connection
with the specified category other than all goods or services. There is a
limited number of goods or services to which most trademarks apply, of which
the producers or providers are also limited in number, making it impossible to
have infinite demands for color trademarks in an industry. Additionally, the
use of a color not commonly used in an industry on a product or service might
increase cost, and not all producers are willing to pay and may afford an extra
cost for a special color. Although official statistics do not offer a clear
picture of what has occurred, the available evidence suggests that Qualitex did
not result in a significant increase of filings corresponding to this type of application.19 Therefore, from the
perspective of producers, it is impossible to deplete colors.

1 Name Warden, “When a Color Scheme Becomes
a Color Trademark”, online at:

2 SmartBiggar, “Protecting colour trademarks
in Canada”, online at:

3 Ibid.

4 Kirk L. Peterson, “Master Distributors,
Inc. v. Pako Corporation: The Eighth Circuit Refuses to Adopt a Per Se
Prohibition on Trademark Protection of a Single Color”, (1993-1994), 79 Iowa L.
Rev. 753, at 768

5 Laura R. Visintine, “The registrability of
color per se as a trademark”, (1996), 40 St. Louis U. L.J. 611, at 616

6 Thomas A. Schmidt, “Creating Protectible
Color Trademarks”, (1991), 81 Trademark Rep. 285, at 285

7 Jeffrey M. Samuels; Linda B. Samuels,
“Color Trademarks: Shades of Confusion”, (1993), 83 Trademark Rep. 554, at 554

8 Brian Richard Henry, “Right Hat, Wrong
Peg: In re Owens- Corning Fiberglas Corporation and the Demise of the Mere
Color Rule”, (1986), 76 Trademark Rep. 389, at 390

9 Ibid.,
at 391

10 Diamond
Match Co. v. Saginaw Match Co., 142 F. 727, (6th Cir. 1906), at 729 para 15

11
Leschen & Sons Rope Co. v. Broderick & Bascom Co., 201 U.S. 166 (1906), at 201

12 see Campbell
Soup Co. v. Armour & Co, 81 F. Supp. 114 (1948)

13 In Re Owens-corning Fiberglas Corporation, 774 F.2d 1116
(Fed. Cir. 1985)

14 Anthony V. Lupo, “The Pink Panther Sings
the Blues: Is Color Capable of Trademark Protection”, (1991), 1 Fed. Cir. B.J.
47, at 47

15 Master Distributors Inc
v. Pako Corporation, 986 F.2d 219 (8th Cir. 1993)

16 Richard L. Bridge, “Master Distributors,
Inc. v. Pako Corporation: Equal Trademark Protection for Color Per Se”, (1993),
38 St. Louis U. L.J. 485, at 486

17 Qualitex Co. v.
Jacobson Products Co., 514 U.S. 159 (1995)

18 Qualitex Co. v. Jacobson Products Co., 514
U.S. 159 (1995), at 168

19 Glenda Labadie-Jackson,
“Through the Looking Hole of the Multi-Sensory Trademark Rainbow: Trademark
Protection of Color Per Se across Jurisdictions: The United States, Spain and
the European Union”, (2008), 7 Rich. J. Global L. & Bus. 91, at
98