Color in Trademark Applications: To claim or not to claim?

 
Image: Carmen Caserta, Milan

Image: Carmen Caserta, Milan

 
 

Fendi? Is that you?

For established and emerging fashion brands alike, trademarks are everything! (Okay, maybe not literally everything; product definitely matters, but from a fashion law perspective trademarks are pretty friggin’ important.) Your trademark is your brand name. If your fashion brand has a logo, that logo is also a trademark. These identifying “marks” are the symbols that communicate to the world that your fashion brand is the source of that fabulous fall blazer or those coveted mini bags all the style influencers are toting (fashion pun!) on Instagram. Trademarks answer the proverbial, ”Who are you wearing?” Trademarks are often a fashion brand’s most valuable asset.

Filing a trademark application is fraught with complexities. Several decisions must be made before the application can be submitted. One of those decisions is whether to submit your mark in color or in black and white. And yes, the decision makes a difference - a big one!

Claiming color in a trademark application

Color is often an essential element in fashion branding: think Christian Louboutin’s “Chinese Red” shoe sole (Pantone 18-1663 TPX), and Tiffany & Co.’s “Tiffany Blue” product packaging (Pantone 1837 Blue). Both brands have invested significant time and resources into creating and protecting their signature brand colors and in preventing competitors from using those colors. 

The main reason to claim color in a trademark application is if the color is an important identifying component of your fashion brand. If you are using a specific color or combination of colors to create a distinctive brand identity, you will likely want to claim those colors in your trademark application.

Pros and cons of claiming color in a trademark application

The advantage of claiming color in your mark when you file your trademark application is if a competitor tries to register a similar mark in the same or a similar color, and you want to challenge the application or bring an infringement claim, your position could be stronger by showing you already have the color registered in conjunction with your brand’s mark.

The disadvantage of submitting your mark in color is if you later decide to change your brand’s identifying colors, and you want to protect those new colors and prevent competing fashion brands from using the colors in their own branding, you will likely need to file a new trademark application, which means more legal fees and more filing fees.

If you claim color, can a competitor use the same mark in a different color?

The simplified answer to this question is, no; if you claim color in your trademark application, your mark does not remain “up for grabs” by other fashion brands. Assuming your trademark application is successful, competing fashion businesses cannot “steal” your mark and then circumvent infringement claims simply by changing the color. Generally speaking, a successful trademark registration provides protection for the design and wording aspects of the mark independent of the color you claimed.

Submitting your mark in black and white

If you’re not yet sure what color or colors you want to use in your branding, or if you want the flexibility to change colors throughout the life of your fashion brand, submitting your mark is black in white might be the more appropriate choice for your trademark application. This is often the case for startup fashion brands that have decided on a name and are eager to protect that name but need more time to develop a distinctive brand identity.

Pros and cons of submitting your mark in black and white

The advantage of submitting your mark in black and white instead of claiming color when filing your trademark application is you retain the flexibility to change your brand colors without needing to file additional trademark applications to protect each color. If your initial trademark application is successful, your mark will enjoy trademark protection in any color.

The disadvantage of submitting in black and white is the color aspect of your mark - if there is a color element - will not be protected; competitor fashion businesses will still be free to use that same exact color in their own branding. 

How important is the color in your branding?

The question to consider is: how important is the color aspect of my brand identity? 

If you consider your brand colors to be an essential element of your fashion brand’s identity, and you’re committed to those colors for the long-haul, you might consider claiming the color in your mark when you file your trademark application. 

Conversely, if you’re a startup fashion brand in your infancy, and you’re still undecided about your brand colors or want to be able to use different colors in conjunction with your mark as your fashion brand grows and evolves, you might consider submitting your mark in black and white.

As always, my best advice is to consult a fashion attorney with trademark experience!

(This article is not meant as legal advice and is written for editorial purposes only. If you need legal services, please contact an attorney.)