Brand Matters: Test Your Trademark
Marie Lavalleye By Robert C. Sprung - TippingSprung LLC
We all know that "a rose by any other name smells just as sweet." But can the scent or the color of a cosmetic product serve as a trademark for that product? The answer is yes, but only if certain conditions are met.
A trademark is defined as any word, name, symbol, device, or any combination thereof that identifies and distinguishes one party's products from those of others and therefore acts as a source identifier. Colors and scents, under certain circumstances, can act as source identifiers in the same way that a word can.
The color red for the doors to Elizabeth Arden day spas, the yellow-and-white combination of the Carmex lip-balm container, and the pink-and-green color combination of Maybelline mascara are all examples of colors that function as marks.
Scents also have been recognized to function as marks for a variety of different products. For example, a manufacturer of sewing thread and embroidery yarn obtained a federal registration for a scent described as "a high impact, fresh, floral fragrance reminiscent of Plumeria blossoms."
Not all colors or scents that are used in connection with products are necessarily entitled to protection. A color or scent that is functional or utilitarian cannot be protected. Whether a color or scent is functional or utilitarian depends on whether it is essential to the use or purpose of the product or affects its cost or quality. Thus, if the color or scent facilitates the use of the product or enhances its desirability or quality in any way, it likely will be deemed functional or utilitarian.
For example, scents of cosmetic products such as perfumes and colognes are functional and so far have not been recognized to serve as trademarks for such products. Similarly, trademark protection for the pink color of bandages was denied because the color pink helped the products blend in with the skin tones of fair-skinned users and therefore was tied to their functionality and desirability.
Even if nonfunctional, a color or scent cannot be protected unless it actually functions as a source identifier and has acquired distinctiveness. Therefore, you must ask yourself, does the color or scent function as a mark? That is, does it identify and distinguish your product from those of your competitors? If it does not serve this source-identifying function, the color or scent cannot be protected as a mark. In addition, you must be able to show that you have used the color or scent in such a way that consumers do associate it with your product and your product alone.
Thus, if the color or scent that you have selected is commonly used in the cosmetic field, it is not likely that it would be recognized by consumers as a source identifier. The color black, for example, on cosmetic compacts was denied protection as a trademark because "black is as common a color for a makeup case as is brown for a paper bag."
To ensure that consumers see color or scent as a source identifier, highlight this feature in advertising and in other promotional materials; e.g., "Look for the red door," or "Look for the familiar yellow lid." Merely depicting a product in advertisements or in other promotional materials without drawing attention to the source identifier function of its distinctive color or scent will not be sufficient.
Marie Lavalleye is a special counsel in the intellectual property group of Covington & Burling, a full-service law firm with offices in Washington, DC; New York; San Francisco; London; and Brussels. She specializes in trademark matters, and advises pharmaceutical and cosmetic clients on trademark clearance, registration, licensing, infringement, and Internet matters. You may e-mail her at mlavalleye@cov.com.
This column is part of the series contributed by TippingSprung. TippingSprung (New York City) offers translation and branding services. Visit the company's Web site at www.tippingsprung.com
