Colors Are Trademarks, Court Says

[mfoster]

Not a lawyer, but I'm not sure I agree with this one...

http://chronicle.com

From the issue dated August 11, 2006

Colors Are Trademarks, Court Says

By MARTIN VAN DER WERF

Not only are a college's logo, mascots, and slogans protected by trademark law. So is its color scheme, a federal court has ruled.

The decision marks the first time a court has ruled that the simple use of a college's colors on items, even when the name of the institution is not displayed, violates a trademark, said Bruce B. Siegal, senior vice president and general counsel for the Collegiate Licensing Company.

The company, along with Louisiana State University at Baton Rouge, Ohio State University, and the Universities of Oklahoma and of Southern California, sued the Smack Apparel Company, of Tampa, Fla., over its production of four T-shirt designs.

Judge Mary Ann Vial Lemmon of U.S. District Court in New Orleans noted that each of the universities had used the same color scheme since the 19th century and had "spent millions of dollars over the years in marketing and promoting items bearing their initials and school colors."

In the context of when and where the shirts were being sold, consumers could easily be confused about whether the shirts were official licensed apparel, she found.

Lawyers for Smack Apparel admitted that the company had used the color schemes of the universities to "call them to the mind of the consumer." But Smack argued that it is a "fair use" to make shirts in the universities' colors if they do not name the institutions.

Section: Money & Management

Volume 52, Issue 49, Page A25

Marc

[ElwoodCuse]

This is not news. The Supreme Court ruled 10 years ago that colors are protectable provided that you could establish that they had (a) taken on secondary meaning and (b ) that they were non-functional.

Qualitex Co. v. Jacobson Products Co., 115 S.Ct. 1300

Example: Owens-Corning holds a trademark on the color pink for insulation because (a) people tend to associate the color pink with their product and (b ) the color has no effect on how the product works.

[andrewharrington]

For those who doubted me whenever I brought up this subject: "Told ya so."

[mohelmets]

Geez, I guess the WSU Cougars better sue my ass then....I wore their "colors" today...

Mike

[BigMac12]

Geez, I guess the WSU Cougars better sue my ass then....I wore their "colors" today...

Mike

Sue your ass, you say?

[rmered]

http://www.theage.com.au/news/national/cad...5861520896.html

Down Under, colours are not owned by anyone.

Cadbury was told it does not own the right to their own shade of purple.

[DEAD!]

Geez, I guess the WSU Cougars better sue my ass then....I wore their "colors" today...

Mike

Sue your ass, you say?

... or maybe sue Uranus....

[Bleujayone]

And in other news today, Donald Trump bought the rights to the rainbow. Now if anyone wears any colors from the rainbow they must pay Trump a percentage.

.................................

This is . This just opens a Pandora's box of potential problems. What's next?

Does this mean that pro sports can go after high school sports or little league teams, or rec leagues, or even other pro and college teams if they use the same colors? They've already sued them for using thier logos or an altered logo that strongly resembles them.

I know of a high school that recently renamed their mascot the "Panthers" and while they do not use the NFL's Carolina Panthers logo, they did adopt their colors of black, Carolina blue, and silver as their own. Does that mean they could be sued under this logic?

Are we going to have court cases trying to determine if someone has copied "Yankee Blue" (Navy)?

All colors already exist. You cannot "create" a new color, only assign a name to one.

You also cannot claim a color exclusivly for yourself and no one else. I'm aware this is an attempt to crack down on illeagal merchandising, but they need to find a different method because this ruling is really reaching & grasping.

[lopernv]

Geez, I guess the WSU Cougars better sue my ass then....I wore their "colors" today...

Mike

Sue your ass, you say?

... or maybe sue Uranus....

You won't give up that planet thing, eh?

[ZBoyer]

This is . This just opens a Pandora's box of potential problems. What's next?

Does this mean that pro sports can go after high school sports or little league teams, or rec leagues, or even other pro and college teams if they use the same colors? They've already sued them for using thier logos or an altered logo that strongly resembles them.

I know of a high school that recently renamed their mascot the "Panthers" and while they do not use the NFL's Carolina Panthers logo, they did adopt their colors of black, Carolina blue, and silver as their own. Does that mean they could be sued under this logic?

Are we going to have court cases trying to determine if someone has copied "Yankee Blue" (Navy)?

All colors already exist. You cannot "create" a new color, only assign a name to one.

You also cannot claim a color exclusivly for yourself and no one else. I'm aware this is an attempt to crack down on illeagal merchandising, but they need to find a different method because this ruling is really reaching & grasping.

I don't know that it will go that far. I think a lot of schools and teams realize the importance of their identities being used by high school and recreation teams for youngsters and, given the fact that a lot of teams don't mind the use of the logo, I don't think teams will care if the colors are being used.

The way that I interpreted this ruling is that it's a problem for vendors who are trying to make money off of the school's likeness without receiving permission to do so. I might be wrong here, but I believe Smack Apparel was the company that was making the shirts that featured some kind of dig at the university's main rival. If you have a shirt that says "Texas sucks" or something of the sort in red-and-white, one would assume it's an Oklahoma shirt - and that's where I think the confusion lies.

That would protect the high schools and such, because they're not trying to pirate the professional or collegiate team's identity for their own corporate profit. Thus, I think the use of colors is fair, unless you can prove that you're trying to take them with the intent of making money off of an unsaid university.

[Mingjai]

Colors Are Trademarks, Court Says

By MARTIN VAN DER WERF

Not only are a college's logo, mascots, and slogans protected by trademark law. So is its color scheme, a federal court has ruled.

The decision marks the first time a court has ruled that the simple use of a college's colors on items, even when the name of the institution is not displayed, violates a trademark . . . .

I hate when the media overblows federal district court opinions. Here, given the Supreme Court's aforementioned holding in Qualitex, the district judge had no choice but to rule the way she did. By ruling against colors as trademarks, the judge would likely have been overruled at the circuit level, and no judge likes being overruled.

The key to colors is that they require demonstration of "secondary meaning." That means that consumers must identify the specific use of colors on the goods with the university. I think schools with common color schemes would have a harder time showing secondary meaning than LSU for example. It's only a violation if consumers would think that the specific use by the defendant would confuse consumers into thinking the goods were licensed merchandise. The color doctrine is more narrow than this article makes it seem.

I don't really buy the slippery slope/parade of horribles argument. Colors have been trademarkable subject matter for 10 years and all hell hasn't broken loose in other industries. The beauty of judge made law is that if bad things do start happening, the law can be quickly changed.

[ElwoodCuse]

I hate when the media overblows federal district court opinions.

I heartily agree. The media's coverage of the judiciary is really lacking in this regard. It's probably a combination of several ugly factors: the media's lack of understanding of what a legal ruling really means, the public's willful ignorance in finding out for themselves, and the desire to sex up a story. If this article was truthfully written as "lower court follows 11-year-old precedent", no one would care.

This ruling is not a big deal at all except to the parties involved. Nothing has changed.

[umlegend80]

All this is doing is preventing people from making shirts that are navy and say Michigna in gold or are royal and say Kentucky in white. No big deal.

[ebod39]

what color do you think of if some says "Zales"? nothing too specific probably.

What do you think when if some says "Tiffanys"? ...you immediately think of the color of the packaging. That is the difference and why color is protectable and chaos will not ensue.

[andrewharrington]

Exactly. It's not going to hurt a high school that uses similar colors as a pro team. It's going to stop, for example, a new international shipping company from using brown as its proprietary color.

[ebod39]

on a sidenote: an interesting battle is brewing in the retail market where 3 companies are

jostling for position to be recognized by the color red. Not in a legal, "I'm gonna sue you sense" but in a public recognition sense (as my example above demonstrates). Target, JCPenney and Macys are all seeing Red in thier logos and marketing. Of the three companies listed, which one would you pick as the initial winner as to who the public associates with the color red?

IMO, Target is the clear winner.

[Puck]

Not surprised by this.

What I was surprised was a few months back was Jack White from the White Stripes whining and crying that red, black and white was the White Stripes color scheme and that bands were ripping them off for having used them: The Used and Green Day amongst others.

Curious if that court finding protects bands as it does teams.

[ElwoodCuse]

Bands will have a lot tougher time proving secondary meaning. I cannot think of any band at all that I would identify based on color alone except for tie-dye as the Grateful Dead.

As for the retail stores, I'd say red is Target but how nationwide are they? They only popped up in some part of PA and NY fairly recently. I bet a nationwide survey of "what store does red equal" would yield very different results.

[bulldogbarks55]

Well, it looks like my high school will be safe. They've used Orange & Blue since 1928 and I can prove it. The Knicks didn't start until '46, '62 for the Mets and Broncos and '72 for the Alberta/Edmonton Oilers. Oh wait, I forgot the University of Florida. Oh well, we can always return to our original Cardinal and Black. Aw, heck, those are South Carolina's hues.

I understand the ruling but there has got to be some common sense used. But then you're dealing with greedy professional and college teams here so all bets (and colors) are off. Heaven help us!

[Gothamite]

on a sidenote: an interesting battle is brewing in the retail market where 3 companies are

jostling for position to be recognized by the color red. Not in a legal, "I'm gonna sue you sense" but in a public recognition sense (as my example above demonstrates). Target, JCPenney and Macys are all seeing Red in thier logos and marketing. Of the three companies listed, which one would you pick as the initial winner as to who the public associates with the color red?

IMO, Target is the clear winner.

True enough, although I don't think that one necessarily thinks "Target" from just the color red.

Not quite like the Tiffany Blue box or the brown of UPS.