TRADEMARKS: YOUR MARK MAY BE PROTECTED IN COLOR OR BLACK/WHITE
A trademark is a branding asset which is anchored to a good/service; namely, a company name, logo, or slogan. Logos, in particular, are powerful trademarks and are typically artistic illustrations that are presented in either color or black/white form. If a trademark applicant is interested in protecting the proprietary color scheme of the logo, the application must reflect the designated colors.
STANDARD TRADEMARK FILINGS
Perhaps the most basic and straightforward “type” of trademark application is the standard character format (letters and symbols). Here the applicant selects a name, for example, ALPHA ZOOM, and does not delineate any further aesthetic restrictions on the mark. The applicant does not particularly care about what kind of font is used in the application of the words nor if the mark is in color. All that matters to the applicant are the words.
STYLIZED TRADEMARK FILINGS
In contrast to the rather uniform Standard trademark, when filing an application for a design mark, which is to say a trademark that is font/color/style/shape specific, the applicant must clearly delineate the precise design features of the mark.
For example, if the trademark that the applicant submits in the application has the color blue in it, the applicant must claim the color blue as a feature of the mark. In the event that the color claim is insufficient in its description or even inconsistent with the color shown in the submitted drawing of the mark, the examining attorney will issue an office action and require the color claim to be amended.
As an added twist, in the event that the trademark applicant submits an otherwise black-and-white drawing that has coloring along the edges and/or lining of the black and white portion of the mark, the applicant must also claim that color as a feature of the mark. Ultimately, this requirement will boil down to the significance of the color vis-à-vis the rest of the trademark and the examining attorney’s assessment of how material the color(s) is to the mark in its totality. If the examining attorney finds that the color feature is non-material to the mark in its whole and the original filing was deficient in the characterization of the color or the mark itself, the applicant will be granted the opportunity to resubmit the mark in a pure black-and-white drawing or amend the color designation. TEMP 807.07(e)
Please note, International Trademarks filed under the Madrid Protocol that are based upon the USPTO trademark application MUST be congruent
HOW DO I SUBMIT A COLOR CLAIM IN MY TRADEMARK APPLICATION?
The trademark application allows the applicant to fairly easily submit a detailed account of what the mark consists of and after selecting the “Stylized” mark radio button, the applicant will have an opportunity to input a description of the mark and the colors specifically.
A color claim in the application will appear in the following format:
The color(s) <name the color(s) > is/are claimed as a feature of the mark.
Critically, the color claim has to specifically include the generic name of the color (but not neccesarily the explicit shade of the color. Of course, the examining attorney retains the right to request and indeed even require a more specific version of the color if he/she feels that will help delineate the countors of the mark. TMEP 807.07(a)(i)
A COLOR TRADEMARK REGISTRATION RESTRICT THE APPLICANT’S USE
Should you opt to register a mark in color, know that you will not be permitted to alter the color when you use the mark to promote your goods or services. The applied-for trademark must match the mark as it is used in conjunction with the sale of your goods/services.
Simply, trademarks registered in color demand that you employ the exact same design mark, with the exact same colors, in your branding assets, to keep the registration valid. Changing any colors could result in a requirement to file an entirely new trademark application.
BLACK AND WHITE TRADEMARKS HAVE A BROADER RANGE OF APPLICABILITY
Centrally, the benefit of registering a black and white trademark, without any specific color designations, is that the application will allow for a wider scope of rights and flexibility of the mark’s use. In the absence of a color claim, the owner of the trademark is allowed to use any colors he or she would like, or no color at all, to substantiate the registration.
WHEN IS THE RIGHT TIME TO REGISTER MY COLOR/DESIGN TRADEMARK?
Color can serve a key purpose to differentiate your product from the goods or services of others. If you strongly feel that your mark’s colors are indispensable to your brand, and you would like to restrict others from the use of similar colors, including a color claim in your trademark application is recommended.
Nevertheless, for the majority of cases, design marks enjoy adequate protection when registered in black-and-white and make the most sense for applicants on a budget.
Of course, for clients that are less restricted financially and would like to maximally protect their brand assets, it may be optimal to file several trademark applications including:
- a design mark application with no color claim (i.e., in grayscale)
- a design mark application that includes a color claim
- and a word mark application for the mark in standard character format
Such a strategy will equip you with several options to invoke as a way to guard against trademark violation risk.