What brands can learn from a new “Tiffany Blue” art stunt about the protectability of colors as brands

Stuart Semple is looking for #FreeTiffany. In order to “free” the characteristic shade of Tiffany & Co., the British artist created a “super flat, matte, high-quality shade” acrylic paint that mimics the Robin’s egg blue of the robust New York jewelry brand and recently offered 150 ml Tubes of it for sale on his ecommerce site for $ 28, all of which have since sold out. The aim of the project? “This once inaccessible color” is to be made available to “all artists for use in their creations”. In line with his desire to adopt Tiffany’s blue, Semple states on his website that “the iconic Tiffany Blue was created by Charles Tiffany and John Young in 1837 and is a trademarked color and requires a license to be used.” While “many companies have trademarked colors like magenta from T-Mobile or red from Coca Cola,” says Semple, “that Tiffany Blue is different from the fact that his trademark has been used for all applications since 1998 and it even hides the Pantone code to have.”

Semple’s Tiffany-specific endeavor – and particularly the language he uses to describe the project – is interesting and provides an opportunity to delve into what brands have to offer, monopolizing colors for their specific offerings, and often their marketing, when for no reason other than such formulation, the rights that Tiffany & Co. actually has in the specific shade of blue (and the rights that trademarks can reasonably have in a color trademark) are greatly overestimated.

While Semple claims that “the iconic Tiffany Blue was held tightly by Tiffany & Co.” because LVMH’s own jewelry company holds trademark rights “for all uses since 1998,” that’s not necessarily true based on the fashion how trademark rights are amassed in the US and how Tiffany & Co. actually uses the blue hue. “In the United States, under certain circumstances, it is possible to register a color as a trademark,” trademark attorney and former trademark examiner of the US Patent and Trademark Office (“USPTO”) Dana Dickson wrote in a recent post. After all, in Qualitex Co. v Jacobson Prods. Co., a landmark case that focused on the protectability of the green and gold color of Qualitex dry cleaning press pads, the Supreme Court explicitly stated that a color can be registered as a trademark as long as it is a single source for the product / service in question .

In short, a single color can be legally protected as a trademark if the use of the color is not functional and the mark in question can demonstrate that consumers no longer associate the color with the single source, but with a single source for the products or services themselves .

Not exactly an effortless endeavor, Cowan, Liebowitz & Latman attorney Dasha Chestukhin noticed that “acquired distinctiveness (also called ‘secondary meaning’) in colors can be extremely difficult to determine” because “in general a color takes some time to be recognized as a source indicator. However, it is not impossible to establish the required distinctiveness. Christian Louboutin, for example, holds trademark rights to Pantone 18-1663TP for use on the soles of contrasting-colored shoes. Cartier has rights in a different shade of red for use on certain product packaging, Hermès has trademark rights in its specific “shade of orange” for use on packaging and even Glossier has rights to certain uses of Millennial Pink … just to name a few examples.

But even if a trademark can amass such rights and appropriate trademark registrations, this is “not a blanket permission to use that color in any way on an object and prevent others from using that color in any way,” Dickson said The USPTO made it clear that “color marks are marks that consist solely of one or more colors that are used on certain items”. Or – in other words: “The registration does not refer to the abstract color (which is used on anything and everything to indicate the origin of all imaginable goods and services)” and instead, such protective measures only extend to: “(1) Use the color on a particular object, [and] (2) for the purpose of identifying the origin only of the goods / services listed in the [party’s trademark] Application “and / or registration.

A quick look at the trademark registrations Tiffany & Co. has – and doesn’t have – in the United States is illuminating in terms of the use and description of their trademarks. For example, instead of registering for a simple color sample, the company has registrations for word marks such as “Tiffany Blue”, which it uses in connection with “Jewelery with the color blue as an integral part of the jewelery”. and “Tiffany Blue Box” for jewelry. As for the other color centric brands, Tiffany has a multi-class registration for “a shade of blue often referred to as Robin’s Egg Blue and used on boxes” in connection with the sale of jewelry, fragrance products, certain leather goods, tableware and stationery, among others, and related retail services.

Tiffany also has registrations for the use of its blue hue on “Jewelry pouch with drawstring“In the class of goods that extends to” jewelry “(ie class 14); on shopping bags – again in connection with the sale of certain categories of goods; in connection with retail and mail order catalog services featuring jewelry, among others; and on metal clasps for use on non-metallic key rings.

Put simply, Tiffany & Co. may maintain registrations for a number of uses of its blue, but these are all specific – and relatively narrowly defined – and in fact, the company’s rights are ultimately limited to the uses it actually and consistently makes Color, as trademark rights are created and maintained through the actual use of the trademark and not through the granting of registrations by the USPTO. As such, Tiffany is unlikely to stand in the way of artists using their blue hue or similar versions of the color in their work, provided that such work does not cause consumer confusion as to whether or not they may be involved in or affiliated with Tiffany & Co, but it also is Worth noting, according to U.S. court records, Tiffany is not overly litigious and the trademark lawsuits it has launched in recent years appear to be reserved to fight real counterfeiters like the operators of sites like besttiffanyco.com, and Costco., which Known to be sued in February 2013 for offering non-Tiffany & Co. branded rings with labels referring to the rings as “Tiffany”, confusing consumers.

With this in mind, brands (and artists too) should follow Semple’s claim that “it is ILLEGAL for you to paint” [Tiffany blue] because it is trademarked in every category “- and the idea that a color can actually enjoy such extensive trademark rights – with a grain of salt and focus all color-centric branding efforts on the reality that color trademarks are indeed protectable, but subject to certain and often narrow application areas.

Semple’s first attempt at taking famous hues and turning them into color has made headlines in recent years after creating “the blackest black paint and ink one can buy in revenge on Anish Kapoor’s control of the coveted Vantablack” as DesignTaxi put it this week. The move followed on from news in 2014 that artist Anish Kapoor had acquired the exclusive license to use Vantablack, the super black, military-grade coating from patent holder Surrey NanoSystems. “Kapoor’s decision to withhold the material from other artists sparked outrage in the international artist community,” Artnet reported at the time. Example, included. He pursued this by making what he called “the pinkest pink” and banning Kapoor from using it.