“Should I Apply for a Color or Black and White Trademark?” - F.C., Toy Designer
To claim color or not? This is a tricky one.
Suppose you've got a logo for your business and want to trademark it. The logo has red, white, and blue. On your trademark application, you will be asked whether you want to claim those colors as part of your application.
What should you do?
It might seem obvious to claim red, white, and blue since those colors are in fact part of your logo's design. But if you do, then only that version of your logo with those shades of red, white, and blue get full trademark protection (assuming your application is approved).
Later on, you may want to tweak the colors of your logo. Don't think you'll ever do it? It happens.
Suppose around Christmas time you want to temporarily put out a red-and-green colored version of your logo on your marketing to show your holiday spirit (Google does this all the time.) That red-and-green colored version does not get the same level of protection that was approved by your original trademark application.
Or maybe you realize later on that the red color on your logo doesn't show up nicely on some print marketing, and you want to use green instead. This green, blue, and white version of your logo does not get the same level of protection either.
For these reasons, it's good to not claim color in your trademark application for your logo. However--like with all good rules, exceptions apply! If the colors in your logo have a secondary meaning, they can be claimed. "Secondary meaning" is too complex a concept to explain in one post, and the case law discussing this issue is substantial.
If you have a logo and want to know the best way to get a trademark on it, contact me. All consultations are free until you formally agree to work with me, and I offer flat fees for all services so you never get a surprise invoice.
Sources: TMEP 807, 37 CFR Section 2.52(b), Robert G. Bone, Trademark Functionality Reexamined, Journal of Legal Analysis, Volume 7, Issue 1, Spring 2015, 28 March 2015.
