Clients who have developed trademarks comprised of words in a particular design often ask us if they should seek registration of the design in black & white or in color. The answer is that it depends on whether color is a critical feature of the design mark. If the color used in the design in and of itself can serve as an indicator of the source of the goods or services to be marketed and sold under the design mark, then registration should be sought for the colors featured in the design. (Think brown and the UPS logo, pink and the T-Mobile logo, red and the Target logo, etc.) In fact, one seeking a federal trademark registration must specify whether color is a feature of the mark sought to be registered.
The problem with seeking registration of a particular color is that the protection that results from the registration could be limited to the colors used in the design. This is not automatically the case, and the analysis depends in large part on how distinctive the underlying design may be – the more distinctive the design, the less important a particular color may be.
Because claiming color as a feature of a mark sought to be registered may act to limit the protection that results from the registration, we generally advise against claiming color as a protected element unless the color acts as a source indicator. If the trademark owner can afford to file 3 separate applications for its design mark, we recommend seeking registration: (i) for the word aspect of the mark standing alone; (ii) design mark in black & white or grayscale; and (iii) the design mark in color. In determining which of these three approaches should be employed, it is critical to consider what registration(s) the specimens of use will support.
Before a trademark owner proceeds to seek registration of a design mark, it is imperative that the owner seek the advice of trademark counsel to determine the best strategy for registration because registration of a design mark can present a number of thorny issues.