84 Trademark Rep. 379 (1994)
Trademark Protection in Color: Do It by the Numbers

handle is hein.journals/thetmr84 and id is 399 raw text is: TRADEMARK PROTECTION IN COLOR:
DO IT BY THE NUMBERS!
By Lawrence B. Ebert*
Until 1985, no United States court had granted protection to
color, in and of itself, as a means of marking goods. This was not
based on a theory that color was incapable of functioning as a
trademark, for color, just as words, can convey information.
Rather, there were considered to be an insufficient number of
different colors to be allocated among all possible producers of a
given class of product. t Moreover, it was said, if protection of
color were available, there would be difficulty distinguishing the
protected color from similar shades of that color. Nevertheless, on
a favorable fact pattern, the Federal Circuit held in In re Owens-
Corning Fiberglas Corp., that a single color is registrable for
trademark protection under Section 2(f) of the Lanham Act.1
In a later decision involving an action between two competi-
tors over the rights to the color blue, the Seventh Circuit in
NutraSweet Company v. Stadt Co. held that color alone should not
be accorded trade dress protection under Section 43(a) of the
Lanham Act.2 In 1993, the Eighth Circuit in Master Distributors,
Inc. v. Pako Corp. expressly declined to follow the Seventh Circuit
and found that color alone could be protected under Section 43(a).3
Then, in 1994, the Ninth Circuit in Qualitex Co. v. Jacobson
* Associate in the firm of Pennie & Edmonds, New York, New York, Associate
Member of the International Trademark Association. The author wishes to thank William
Landes, Stephen Kramarsky, and Wan Kim of the University of Chicago, Robert Kunstadt
of Pennie & Edmonds, Duke Morgan of Westlaw, Ruth Heard of Lexis and Charlotte Jones
of The Trademark Reporter®.
t Aristotle, who noted that The rainbow has three colors, and these three and no
others, can be viewed as an inspiration for the color depletion theory of trademark law.
Meteorologica, 111,2,4. E.W. Webster, translator (Clarendon Press, 1923).
1. 774 F2d 1116, 227 USPQ 417 (CAFC 1985), revg 221 USPQ 1195 (TTAB 1984).
2. 917 F2d 1024, 16 USPQ2d 1959 (CA 7 1990), cert denied 111 S Ct 1640, 113 LEd2d
735 (1991).
3. 986 F2d 219, 25 USPQ2d 1794 (CA 8 1993), revg 777 F Supp 744, 21 USPQ2d 1929
(D Minn 1991), rehg, en banc, denied 1993 US App LEXIS 6941 (CA 8 1993).

379

Vol. 84 TMR

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