Beware the Blue Turf
Boise State is known, at least in part, for the blue color of its football field. The university has had blue turf since 1986, when the athletic director installed blue turf to cut costs. In addition to saving money, the blue turf attracted players, provided additional exposure for Boise State’s athletics, and dramatically increased enrollment. According to a city historian, the blue turf now “represents the city.” After a 2007 nail-biting finish and ultimate victory for the Broncos at the Fiesta Bowl, Boise State went a step further to market and protect its recognizable blue turf. On September 19, 2008, Boise State applied for a service mark for “the color blue used on the artificial turf in the stadium;” the mark issued on November 10, 2009.
Since that time, Boise State has enforced its trademark against others using fields of colors other than the standard green. Additionally, Boise State granted licenses to some high schools, allowed the University of Michigan to use blue turf used for field hockey, and agreed that Coastal Carolina could use a teal field. According to a lawyer for Boise State, the university often agrees to license other schools “as long as it doesn’t prevent Boise State from getting the best students and the best student-athletes that we’re looking for.”
Boise State is not the only entity to receive a trademark for the use of a color. Others include:
Christian Louboutin’s red soles for shoes;
UPS for the color brown;
Tiffany’s famous robin’s-egg blue;
The University of Texas’ burnt orange; and
John Deere’s green and yellow colors;
Since 1995, color may be protected as a trademark when the color is used to distinguish and identify the source of a company’s goods or services. But it must also pass several requirements to qualify for protection. Color marks are never inherently distinctive so a showing of acquired distinctiveness or secondary meaning is required for registration on the Principal Register. Additionally, a color is not protectable if it is functional. A color is functional if it is essential to the use or purpose of the products, affects the cost or quality, or if its exclusive use would put competitors at a non-reputation related disadvantage.
As with Boise State, color can be protectable and a great marketing strategy. It is therefore important to consider the function and manner of use of color in your business to determine whether the color is protectable as a trademark, and to consider whether others may claim an intellectual-property right in colors that you use in your day-to-day business and marketing.
Sources: http://www.nytimes.com/2016/09/11/sports/ncaafootball/boise-state-mounts-a-paper-defense-of-its-home-turf.html?_r=1 http://tmsearch.uspto.gov/bin/gate.exe?f=doc&state=4810:v3g8yw.2.26 http://www.businessinsider.com/colors-that-are-trademarked-2012-9 Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 696 F.3d 206 (2d Cir. 2012)
For more information on this topic, please visit our Trademark Protection service page, which is part of our Trademarks practice.
Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.
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