Color Trademarks: A Black Future for Red Soles?
Does color matter?
Probably the last “marketing visionary” that did not recognize the importance of color for the visual identity system of a brand was Henry Ford, for whom "any customer could have a car painted any color that he wanted as long as it was black." Since then, we have come a long way in terms of acknowledging the importance of color as a tool to build brand equity. Apple´s CEO, Steve Jobs, called Google´s Vice President of Engineering in 2008, to explain that the second O of the Google logo on the iPhone did not have the right yellow gradient. This story illustrates the importance that color management has acquired nowadays.
Marketers now recognize that colors have the power not only to shape people’s emotions but also influence their purchasing behavior. A 2007 study by the University of Loyola, Maryland, found that a consistent use of color to manifest critical messages could increase brand recognition up to 80%. Other studies have shown that color is even more memorable than a shape or a name. Think of red, which brand do you think of first? If you are like most people probably your answer will be Coca-Cola. This example illustrates how the consistent use of certain colors is a highly effective way of building brand equity as this provides instant recognition and association. This kind of associations become even more important in an environment where competition is harsher and it is increasingly difficult to find a distinctive edge.
In this context, colors play a key role in achieving such differentiation. Their acceptance has also grown due to certain rulings in Europe and the US that have recognized the capacity of colors to perform as trademarks. Cadbury’s, Tiffany’s, UPS, Heinz, T-Mobile, Orange and BP have all looked to protect their colors as trademarks in different jurisdictions. But the recent negative ruling on the Louboutin´s red soles case casts a doubt on the future of color trademark protection, its legal security and the cost-benefit of investing in it.
The fight over a red “signature” sole
The Louboutin brand is associated with impossible-to-wear stilettos with red-lacquered soles. Like many successful, distinctive and catchy visual devices that conform the expression of strong brands, the red soles were only incorporated to the design of the shoe by chance. Soon after the launch of the brand back in 1991, Christian Louboutin applied red nail polish to the sole of a shoe as he believed that the shoes lacked energy. Since then, this feature has become a distinctive and recognizable element of the brand. Recognizing the value of such association and the instant recognition that it generates, Christian Louboutin went on to file a trademark application for the red-color soles in 2007 and the red of the soles was granted trademark protection in the US in 2008. The specific shade is now known as Red Chinese (Pantone No. 18-1663 TP) but it was never precisely identified as such in the trademark application form, so the protection was granted to a rather “broad and indefinite” red trademark.
Earlier this year, Louboutin, filed a trademark infringement claim against Yves Saint Laurent, who had started to use this distinctive element of the Louboutin’s visual identity for their 2011 Resort collection. Louboutin sought a court injunction against YSL’s products and claimed damages of at least $1million. But Judge Victor Marrero of the Southern District of New York ruled against Louboutin’s claim.
The ruling of Judge Marrero opens up the possibility for any other designer to make red-soled shoes. The Judge based its ruling in four main points:
- For fashion purposes, single colors can be protected as trademaks only when used in distinct patterns or combination of shades.
- The specific red color for which protection was intended was not precisely identified in the registration, i.e., it was not referenced to an objective Pantone or RAL system color, and therefore “overly broad” and likely not protectable.
- By comparing fashion designers to artists, the judge concludes that color performs nontrademark functions, aiming to attract, to stand out, to beautify and to be useful, not to identify and advertise a commercial source. But attracting and standing out are basic brand functions, and the legal foundation for the brand concept is the trademark concept.
- The ruling argues that it would be absurd allowing the protection of the use of a single color for fashion items to spiral up and extend to all kinds of fashion items. This point is directly related to the “depletion theory” that considers that color per se cannot function as a trademark, as the colors available to players within a specific category is limited and allowing colors to be protected as trademarks would lead to the color “exhaustion or depletion.”
But, can you trademark a color?
The first question is, can you trademark a color? Or like Judge Marrero’s ruling suggests, can you only trademark patterned colors for fashion?
Although it is not easy to protect single colors as trademarks, it is possible to do so. A color trademark is a non-conventional trademark, such as sounds, shapes or scents trademarks. For a color to be susceptible to be protected as a trademark, it must satisfy certain conditions in most jurisdictions:
- The color needs to be strongly associated to the brand, i.e. it is necessary to prove that the continued and intense use of that color in time has created secondary meaning, i.e., an immediate and distinguishable association to the subject brand (at least in the category)
- The color must be represented in an objective, precise, durable and self-contained way (eg. Using RAL or Pantone) – the only weak aspect of the Louboutin registration and further claim
- The color must not fulfill a functional purpose or be the result of the regular manufacturing process
Why trademark a color?
The second question is, is it worthwhile the effort and resources invested in trademarking a color? It depends. There are some industries, like the mobile industry that have invested a lot of resources in registering different colors: T-Mobile, Libertel and Orange have all registered their signature shades in different countries. It is great to have that extra “layer” of protection added to your corporate shade, but only a consistent and intelligent use of your brand colors to convey key brand messages can provide enduring distinctiveness to a brand´s visual identity. At a specific point in time, and without having protected its color as a trademark, the brand that was most associated to red in the UK was Vodafone rather than Coke. That did not come through legal protection but rather a very intelligent and consistent usage of the red shade.
Black future for red soles
It could be argued that in general the non-conventional trademark protection is still to be developed and consolidated in Europe and the US. There is still to be seen the impact of controverted Marrero’s ruling in this area which will probably be negative. Beyond specific legal and technical aspects which may favour or prevent colors from being granted trademark protection, it is key to earn “emotional ownership of a color” by using it in a distinctive (ideally, unique) way that helps build brand equity. It is not easy, but some brands like Vodafone, INGDirect or Coca-Cola might signal the way forward. Using the color in a way that is consistently and recognizable associated to a particular product or service is essential to build a strong association. When you think about the costs of granting trademark registration, litigating if the rights are infringed and compare this with the potential leverage of brand equity derived from strategically deploying such resources, your cost-benefit analysis of registering a color trademark may not always be positive.
Of course, it seemed the right move for Louboutin at the time, as he had been able to develop a strong and distinctive association with the red soles. But, can you sustain all the weight of your brand equity just on a single tangible attribute like color? If so, is your red-sole lacking some soul?