To claim color or not to claim color?

 Is your Logo in color?

So, let's say you have a great logo that is very unique and you are proud of. You invested in a professional graphic designer to get that logo just right and to your liking, and now you are ready to protect your valuable brand by seeking trademark protection for your shiny, vibrant color logo. But your trademark attorney asks you, "Do you really want it in color? Why not just black and white?" What should you do?

Well, first of all, including color as a feature of your trademark lowers the degree of protection that it will receive upon registration with the USPTO and limits your options for enforcement. Submitting your design mark in black and white allows you to use any combination of colors for your logo or other image with full trademark coverage. Claiming a color or combination of colors, on the other hand, limits your coverage against infringement to that specific color or combination.

Thus - unless the color element is an essential, central and fundamental component of your trademark (or identity) - think about doing a black and white version.

But what is the best practice and strategy as to color?

There are two answers to this question. One - many companies will first file and register a black and white logo to secure the broadest protection possible. Then, because the color is an important part of their identity, they will also file a second trademark for the logo in color. That gives them the most flexibility and satisfies both their goals. Many major corporations have followed this strategy, by first filing for protection of a black and white version of their color trademark, and then following up with a colorized version. FedEx, Starbucks, Google, Subway, and Apple all have trademark registrations in which color is claimed. However, each of these companies also obtained protection for their trademark without color. Furthermore, each also sought to protect their color scheme only after securing protection in which color was not claimed as a feature of the trademark.

Two - with trademarks there is always something "more" you can file to protect. Except for mega-corporations, most small and medium business owners do not have the endless budget to file multiple trademarks and thus protect both color and non-color versions of their logo. Each owner should utilize their budget in the manner that is most important to them. However, if you can only afford one trademark for the time being - that trademark likely should be the non-color version of it. As we have seen above, a black and white version of your logo will secure the broadest protection against copycat infringers, AND it will give you the option to change your color scheme at a later date without invalidating that trademark's protection. That is the advice, however, clients always get the final say and their decision will be followed.

If you need help with trademarks and would like to learn more - consider contacting our office, as we assist clients across the US and internationally with their trademark legal projects!

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