Red Touches Black: The First Application of Maker's Mark and Louboutin in the Context of Color Trademarks

I. INTRODUCTIONAs a general rule, design features that are considered functional are not protected under the Lanham Act because they are: (1) essential to the use or purpose of the product; or (2) serve some form of competitive necessity.1 However, the doctrine of aesthetic functionality has evolved to protect certain functional elements that are aesthetic, such as color, if the use of that color meets certain criteria.2 The test for whether a design element, including color, can be trademarked involves a four part analysis, inquiring whether the feature: (1) is essential to the use and/or purpose of the product; (2) affects the cost and/or quality of the product; (3) significantly impacts competition; and, (4) has secondary meaning.3Ever since the Supreme Court decided in Qualitex v. Jacobson Products that color can qualify as a trademark, just like a word or design, lower courts have struggled to identify the types of circumstances under which color can serve as a trademark.4 Several of the cases examining the protectability of color, however, have focused on the four-part test to analyze the presence of color on a product and its effect on the use, price, market, and overall character of the product.5In May and September 2012, the Sixth and Second Circuits applied this four-part test to grant trademark protection to the red wax seal on Maker's Mark bourbon bottles and the red soles on French fashion designer Christian Louboutin's ("Louboutin") high-end shoes.6 In 2013, the Trademark Trial and Appeal Board ("TTAB") addressed the question of whether a florist company could trademark the color black.7 The TTAB's decision to deny Florists' Transworld Delivery ("FTD") a trademark for the color black was a federal court's first attempt at applying the four-step analysis following the landmark Maker's Mark and Louboutin case.8 Unfortunately, the TTAB misapplied the test, leaving unanswered questions for other courts, and possibly the Supreme Court, to address.9While courts have struggled to identify the circumstances in which color can be trademarked, the recent Maker's Mark and Louboutin decisions appear to settle upon a useful analysis.10 This Comment argues that in FTD, the TTAB ignored this standard by denying the trademark simply on the basis that black was functional, and did not engage in a full secondary meaning analysis.11 Part II examines the history of trademark protection for single colors and the four-part test for analyzing trademark infringement claims involving color.12 Part III argues that the TTAB did not correctly apply the test when it decided that the color black could not be trademarked without even engaging in a full secondary meaning analysis, which is the last step in evaluating a trademark infringement claim.13 Part IV offers a policy argument that advocates for more stringently applying the four-part test in order to clarify the circumstances under which color can be trademarked.14 Part V concludes that the TTAB should reexamine the FTD case and fully analyze the color black in a way that is consistent with the analysis in Maker's Mark and Louboutin.15II. BACKGROUNDA. The History of Color Trademarks1. Pre-QualitexPrior to the adoption of the Lanham Act, the principal statutory framework governing trademarks in the United States, very few courts addressed the issue of whether color could be trademarked; thus the courts' posture towards color trademarks was ambiguous.16 It was not until 1945 in Yellow Cab Transit v. Louisville Taxicab & Transfer-when the Sixth Circuit decided that the yellow color on taxicabs was sufficiently recognizable to be given some protection-did courts began to recognize how color could identify a brand in certain contexts.17 Still however, it was not until after the passage of the Lanham Act that the courts rejected the idea that color alone is never subject to trademark protection.18The issue of whether color could be trademarked, however, remained relatively inactive until 1985 when the United States Court of Appeals for the Federal Circuit was faced with the question of whether a fiberglass manufacturer could trademark the pink color of its insulation in In re Owens-Corning Fiberglass. …