Qualitex v Jacobson: Can a Single Colour Be a Trademark? A Case Study of the US Supreme Court Decision

Qualitex made press pads for dry-cleaning firms and used a particular green-gold colour on them. In 1989 Jacobson began to sell pads to dry cleaners in a similar colour.

Qualitex sued Jacobson in the US District Court for the Central District of California for unfair competition. In 1991 it registered the colour with the USPTO as a trademark and added a trademark infringement claim.

The district court ruled for Qualitex. The Ninth Circuit set that judgment aside, reasoning that colour alone could not be registered as a trademark.

Two questions reached the Supreme Court: does the Lanham Act allow a colour, standing alone, to be registered as a trademark, and does the functionality doctrine stand in the way of registering a colour?

Jacobson argued that only a limited number of colours are practical for such products and that many colours look very alike.

• The Lanham Act defines a trademark broadly as any word, name, symbol, or device, or any combination of them.
• A colour can act as a descriptive mark: through use in the market it can gain secondary meaning and identify the source of a product.
• Functionality is not an absolute bar to colour marks. A feature is functional only if it is essential to the use or purpose of the article or affects its cost or quality.
• Jacobson's concern about a limited supply of colours is a functionality question, to be handled under that doctrine and not by banning colour marks outright.
• Colour can be registered as a mark in its own right, separately from trade dress protection.

The Supreme Court reversed the Ninth Circuit. The green-gold colour could be registered as a trademark, subject to the usual requirements of secondary meaning and non-functionality.

The decision removed the idea that colour can never be a mark. It did not give colour marks an easy ride: the owner must still prove that consumers see the colour as a sign of origin, and the colour must not be functional.

Later cases in the US and elsewhere test the limits. In fashion, the dispute over red-soled shoes (Louboutin v YSL) built on this reasoning. Courts in other countries use their own rules, but Qualitex remains a standard reference for colour marks.

• Track and document how long and how widely you use a colour as a brand signal.
• Collect evidence that customers link the colour with your company (surveys, sales, advertising).
• Check that the colour has no practical function for the product, since functional colours are not protected.
• Register the colour with a precise description and specimen in each country where you rely on it.

Wikipedia: Qualitex Co. v. Jacobson Products Co.
Judgment: 514 U.S. 159 (1995)