On November 25, 2008, the U.S. Court of Appeals for the Fifth Circuit (Court) handed a major victory to a group of universities seeking to protect their sports teams’ color schemes as trademarks. Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co., No. 07-30580 (5th Cir. Nov. 25, 2008). The Court upheld the actual damages and lost profits awarded to the universities, finding that their trademark rights were infringed when a clothing retailer, Smack Apparel, sold shirts featuring the colors of the universities and slogans referring to their football programs. Although team colors have been relevant to prior trademark decisions, the color analysis in those cases was ancillary to the question of whether a word mark or logo had been infringed.1
The Smack Apparel Court made it clear that the school colors were protectable as trademarks, noting that the universities used the color schemes for more than a century, and the public closely associated them with the universities. The Court also highlighted the importance of sports teams’ logos and colors to fans, indicating that consumers buy clothing bearing team colors in an effort to associate themselves with the teams or universities. Rejecting Smack Apparel’s arguments, the Court found that fans’ desire to wear the team colors on game day, and the use of the colors to show community support for local teams, did not allow unlicensed retailers to appropriate those colors. It is not clear that all courts would discount evidence of community usage. Future courts may find such evidence, particularly if it is extensive, to weigh more heavily against a finding of protectable trademark rights.
It appears the context of Smack Apparel’s use of these colors also contributed, perhaps heavily, to the finding of infringement. The shirts included slogans indirectly referencing each university’s sports teams such as the phrase “Got Seven?,” which refers to The Ohio State University’s seven national championships in college football. The Court cited a United States Court of Appeals for the Eleventh Circuit case that found the maker of a beer can featuring the red and black of the University of Georgia and a bulldog logo liable, as support for its stance that these types of products are an impermissible attempt to trade on sports fans’ recognition of and identification with their teams. Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535 (11th Cir. 1985).
Why Should Color Marks Be Developed and Registered?
Just like a team name, colors can provide an identity and unifying feature for an organization. This helps to easily associate new merchandise and product lines with the existing goodwill of the organization. For sports teams, colors and color schemes can sometimes be even more useful than names and logos, because they are highly distinctive and instantly recognizable, even from a distance. This is particularly the case where the color scheme is unique to one organization and is not used by others in similar fields. As the Smack Apparel case shows, simply using a color scheme as a source indicator for a long enough time can, in the Fifth Circuit and under the right circumstances, give a team or organization rights in those colors. However, the burden of demonstrating trademark rights in the color scheme during a dispute can potentially be reduced or even eliminated by obtaining a federal trademark registration.
Assuming the color scheme in question is protectable, federal registration also provides numerous additional benefits that mere use of a color scheme cannot, such as:
- Proof of trademark rights in the color scheme, as registration creates a presumption that the color scheme is a valid trademark
- A nationwide scope of protection for the color scheme
- The potential to recover attorneys’ fees and obtain treble damages for infringement
Protecting Rights in Color Marks
In addition to registering color marks, this case demonstrates a number of other steps that color mark users can take to attempt to create and preserve their rights:
- Select a unique and distinctive color scheme and keep variations to a minimum.
- Actively promote the color scheme as an indication of source, sponsorship, or affiliation with your organization. For example, if the colors are silver and gold, sell shirts under a “Silver and Gold” label.
- Refer generally to the team or organization by its color scheme. For example, the Court highlighted that Louisiana State University is often referred to as the “Purple and Gold.” This can be done outside of the sports world as well (e.g., UPS’ advertisements referring to itself as “Brown”).
- If the color scheme is unique and distinctive, ensure that unauthorized third-party use of the color schemes is minimal. It may be a delicate proposition to limit the use of a sports team’s colors by loyal local businesses, but efforts to do so may be necessary to safeguard claims of exclusive rights in the color scheme. Simple licenses may be the right balance in such cases.
- Exercise strict control over the quality of licensed merchandise using the colors.
- Require that licensed products display the name of the licensee and indicate the colors are used under license.
What Types of Colors and Product Features Can Act as a Mark?
While the Smack Apparel case shows that it is possible to protect unique and distinctive school and team colors as trademarks, the ability to develop and protect color marks is also applicable to other industries. For example, Citigroup, Inc. holds a federal registration for its distinctive ”Blue Wave” mark for banking and investment services.
The mark comprises a blue wave design. U.S. Reg. No. 2005506
Of course, not all colors are trademarks. Colors or schemes that are not unique in the field and are therefore not distinctive of one organization may not be protectable. Also, even a unique color cannot merely be a product decoration; it must be used as one way for customers to identify the source of the product or service. To qualify as a trademark, a color also cannot serve a functional purpose such as making the product appear smaller or reducing surface heat.
Many businesses have successfully used or registered colors and other product features as trademarks. Some examples include the Citigroup Blue Wave noted above, the pink color of Owens Corning insulation, the red color of DAP® sealant buckets, the distinctive red knobs of Wolf Appliance, Inc. ovens, and the gold color and swirl of a Vickie Jean’s Creations bulb.
U.S. Reg. No. 3485025 U.S. Reg. No. 3164353
Other aspects of a product such as shape can also serve as a protectable mark under the proper conditions. A good example of this is the distinctive “Home Plate” found on the corner of The Vollrath Company, Inc.’s pans.
U.S. Reg. No. 3398563
Developing and registering non-traditional marks such as colors and shapes requires the selection of unique attributes and then disciplined and consistent use, promotion, and protection of those features. The benefits of protecting non-traditional marks can be truly significant. The increasing recognition and protection of trademark rights in unique product features provide clear reasons to consider developing and registering non-traditional marks, in addition to the more traditional slogans, company trade names, and product brand names. In particular, color marks represent a natural and valuable addition to the trademark portfolios of collegiate and professional sports organizations.
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1 See e.g., National Football League v. Wichita Falls Sportswear, Inc., 532 F. Supp. 651 (W.D. Wash. 1982); National Football League Properties, Inc. v. New Jersey Giants, 637 F. Supp. 507 (D.N.J. 1986); The Board of Trustees of the University of Arkansas v. Professional Therapy Services, Inc., d/b/a Razorback Sports and Physical Therapy Clinic, 873 F. Supp. 1280 (W.D. Ark. 1995); Villanova University v. Villanova Alumni Educational Foundation, Inc., 123 F. Supp. 2d 293 (E.D. Pa. 2000).
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Authors:
Sharon R. Barner
Chicago, Illinois
312.832.4569
[email protected]
Mary K. Braza
Milwaukee, Wisconsin
414.297.5505
[email protected]
Mark J. Diliberti
Milwaukee, Wisconsin
414.297.5581
[email protected]
Eric M. Schmalz
Milwaukee, Wisconsin
414.319.7313
[email protected]
Andrew J. Wronski
Milwaukee, Wisconsin
414.297.5518
[email protected]
