TMEP 807.14(e)(ii): Marks that Include Color and Other Elements

This is the October 2015 Edition of the TMEP

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807.14(e)(ii)    Marks that Include Color and Other Elements

The extent to which color contributes to the commercial impression created by a mark is often determined by the type of mark in question (i.e., word mark, design mark, or trade dress). In some cases, color may play only an incidental or insignificant part in creating the commercial impression of a mark, such as the color lettering of a word mark. In other cases, color is the only feature of the mark that creates a commercial impression, such as where the mark consists only of color(s) applied to goods or their packaging, or to articles used in the sale or advertising services.

Word Marks

In general, the addition, deletion, or amendment of color lettering in a word mark does not result in a material alteration of the mark.

Word marks may appear as stylized marks in color lettering. With the possible exception of generic wording, as discussed below, the literal portions of word marks are likely to be the dominant portions that create the greatest commercial impression. See Inter-State Oil Co. v. Questor Corp., 209 USPQ 583, 586 (TTAB 1980). In most cases, the color in the lettering is unlikely to have a significant impact on the commercial impression created by the mark.

Exception – Generic Terms. Generic terms are incapable of functioning as marks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. However, if the generic wording appears in color lettering, the color portion may be capable of functioning as a source indicator. See, e.g., Courtenay Commc'ns Corp., v. Hall, 334 F.3d 210, 216, 67 USPQ2d 1210, 1214 (2nd Cir. 2003) and cases cited therein (“There are many examples of legally protected marks that combine generic words with distinctive lettering, coloring, or other design elements.”). With respect to such generic word marks, the color element of the wording is likely to be the more dominant portion in creating the commercial impression of the mark. Therefore, in cases where the entire literal portion is generic, a proposed amendment to the color portion of the word mark generally would be a material alteration.

Design Marks

In general, the addition, deletion, or amendment of color features in a design mark does not result in a material alteration of the mark.

In a color design mark, the design portion is likely to be the most dominant portion of the mark in creating a commercial impression. Although the color portion is part of the mark, it only appears in the context of the design and is not a separable element. The color portion is, therefore, less likely than the design portion to play a significant role in likelihood of confusion or trademark selection considerations. For example, the fact that two different designs, such as a red hat design and a red boat design, may appear in identical colors is unlikely to result in a finding of likelihood of confusion. In contrast, if two boat designs are identical in stylization, it is likely that the designs would be held to be confusingly similar regardless of any differences in their respective colors.

Exception - Color Impacts the Meaning or Significance of the Mark. An amendment that causes the mark to have a new meaning or significance in the context of the goods or services is likely to be a material alteration. For example, the amendment of a blue colored drop for “spring water,” which looks like a rain drop, to a red drop, which looks like blood, would likely be a material alteration because the change in the color of the drop has altered the meaning or commercial impression of the mark. An amendment of a rainbow design, consisting of an arc with a spectrum of colors, to a black or solid-colored arc, would be a material alteration, regardless of the goods or services, because the amended mark is just an arc and is no longer identifiable as a rainbow.

Exception – Color is the Dominant Portion of the Mark. Generally, if the color portion to be amended constitutes the dominant or most significant part of the entire mark, it becomes more likely that the proposed color amendment is a material alteration. For example, if the design mark consists solely of a common geometric shape, the color element is likely to be the dominant element of the mark. As a result, amending the color of a common geometric shape is likely to be a material alteration.

Another factor to consider in assessing the dominance of the color element of the mark is the size or prominence of the color design or graphic element to be amended in proportion to the rest of the mark. For example, if it is clear that the mark consists of the overall color scheme of a product’s trade dress, such as the product package or container, an amendment to a particular color element that is small or insignificant in proportion to the entire mark is unlikely to be a material alteration. Conversely, an amendment to a color element that is large in proportion to the entire mark, or is a dominant element of the overall color scheme, is more likely to be a material alteration. For example, if a mark consists solely of the color scheme or pattern of a package or container that is equally divided into two colors, amending one or both colors is more likely to be a material alteration.