TMEP 1202.05(c): Color as a Separable Element

This is the October 2015 Edition of the TMEP

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1202.05(c)    Color as a Separable Element

As with all trademarks and service marks, a color mark may contain only those elements that make a separable commercial impression. See TMEP §807.12(d). Accordingly, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression. However, the applicant may register the color of the background material on which the words or design appear apart from the words or design. See TMEP §1202.11regarding background designs and shapes.

The commercial impression of a color may change depending on the object to which it is applied. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). Granting an application for registration of color in the abstract, without considering the manner or context in which the color is used, would be contrary to law and public policy, because it would result in an unlimited number of marks being claimed in a single application. Cf. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999) (mark with changeable or “phantom” element unregistrable because it would “encompass too many combinations and permutations to make a thorough and effective search possible” and, therefore, would not provide adequate notice to the public); In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (hologram of varying shapes, sizes, content, and positions used on trading cards constitutes more than one “device,” as contemplated by §45 of the Trademark Act). Only one mark can be registered in a single application. TMEP §807.01.