By Adelaide Saucier.
Trademarks saturate our everyday life. We idolize the icons; we adorn ourselves with brands; we use brands and marks to orient ourselves in social status and cultural circles. Trademarks drive the capitalist industry by associating colorfully distinct symbols or words with the maker of the good or product. Under the Lanham Act, a mark may gain protection if it is distinctive, non-functional, and used in commerce.[i] A trademark stands to protect the source of the good and, perhaps, unlike copyright law, does not reward creativity. Trademark law secures “words, names, symbols, devices, or combinations thereof.” [ii] From the perspective of the visual arts, many artists use distinctive colors which become the artist’s “brand:” we immediately think of Yves Klein’s blue, Van Gogh’s yellow, and Monet’s Manganese Violet. In the eyes of the law, color falls under the realm of trade-dress, which is defined as the distinct product packaging or design adorning the brand’s goods. Source identification is integral to trademark and trade-dress, so that goods are delineated for consumers, competitors, and the brand itself. Recently, Anish Kapoor and Stuart Semple entered into a battle of color proprietorship. Kapoor claimed ownership of the “Blackest Black,” or Vantablack, and in response, Semple created a color he claims to be “the Pinkest Pink,” “the glitteriest glitter,” and his own version of a blacker black.[iii] But can artists truly claim ownership of a particular color?
The Greys of Trade-Dress Protection
The first obvious route to protecting a color would be trademark and trade-dress. A brand may gain protection for trade-dress, and therefore for the use of a particular color, if it is inherently distinctive, that is it “inherently identifies a particular source,” or has acquired secondary meaning.[iv] Because design may serve a purpose other than source identification, it is not inherently distinctive and must establish secondary meaning to gain trademark protection.[v] Secondary meaning requires proof that the mark no longer stands for itself, but that the public associates it with the brand, or secondary meaning, which it now identifies. Secondary meaning requires time to become established because the association must be built up over years of use in relation to the product. This secondary meaning requirement establishes that color is not inherently distinctive, that is, color is transferable and may identify something beyond what one brand using it signifies.
Another requirement of trademarking color is that the selected color must not be functional. Color should not enhance the utility or aesthetics of the product.[vi] If the color sought to be trademarked is a functional feature of the work or product, it may not be registered as a trademark.[vii] The court specified that the presence of a patent on the colored product is a good indication of its functionality.[viii] For an artist, the use of a color is inherently functional, because the artist cannot help but use color aesthetically. For a product, like the traffic sign, the trademarking hangup occurs in the utility. For an artist, e.g. Mark Rothko, the use of color appeals to the aesthetic and useful purpose of stimulating emotional and intellectual sensations within the viewer. The artist cannot escape the functionality of a color palette.
Major brands have gained protection of their indicative color. Tiffany & Co., HomeDepot, and Louboutin are all brands which have rights to certain colors.[ix] The rights to the color arise only after the color pervades the company and becomes the brand itself. However, even though these brands maintain protection over their uses of the colors, it is not a complete monopoly over the color, it is only a right to use the color in a particular market sector. By contrast, a company like General Mills may not trademark the yellow color of its Cheerios box, because that yellow is so pervasive in the cereal box industry and secondary meaning could not be established for Cheerios.[x] Since trademark does not award creativity, and because the trademark office is not concerned with protecting an artist’s creation, the concurrent use of a color in different markets is perfectly normal and encouraged. The copyright office sets a lower bar, requiring only a “minimal degree of creativity.”[xi] The copyright office does not judge the work on artistic merit, but whether the work meets the statute’s standards set and supported by case law.
European law differs from American trademark law in that the bar for color mark protection is not as high. An applicant must only prove distinctiveness.[xii] For example in 2003, case involving Deutsche Telecome and Mobilcom AG the court stated that distinctiveness occurs when the “relevant” trade circles must associate and identify the color with its origin.[xiii] That when applied to the product, the color itself is distinct. Unlike in the U.S. where a color is not in itself distinct, but must acquire secondary meaning, Europe provides for a sole color mark.[xiv] The applicant still bears the burden of providing evidence that the color has acquired distinctiveness as to the product.[xv] The European Union Intellectual Property Office defines the distinctive factor as, “distinguishing [the brand] from other companies in the marketplace so that [the brand] can protect and build [its] brand identity and value.”[xvi] It may be mostly a semantic difference, as the mark in the EU similarly must have an established relationship with the product, but the US expressly prohibits that a color be inherently distinctive and that it must acquire secondary meaning, a bar which the EU does not impose. The Madrid Protocol (1996) is another avenue for international registration. It is a hybrid of the US trademark system which covers marks within any country that has joined the international system and which the registrant has chosen for protection for its mark.[xvii] It is a cost efficient way to gain protection in multiple countries without going through each country’s specific registration system.
Art: Not Everything Is Black and Pink
If a designer or company, such as Tiffany & Co. and Louboutin, can trademark a color, what bars artists like Semple and Kapoor from trademarking a color? And if they cannot monopolize the color through trademark law, how are they preventing other artists from dipping their brushes into new colors at all?
The feud between Kapoor and Semple started when Kapoor claimed exclusive use and ownership of the “Blackest Black” (or Vantablack) through an exclusive artistic license with the producer, Surrey Nanosystems, of the pigment or technology, as it may rightly be known.[xviii] Incidentally, Kapoor has yet to use the pigment, as he has found it difficult to incorporate the material into his art because it is extremely dense and can only be produced 2cm squares at a time.
Stuart Semple, a British artist, took great umbrage with Kapoor’s usurpation of the pigment and worked with his own team of chemists to create another version of a “Black Black” (or Black 2.0) and a “Pinkest Pink.” Semple made these pigments available to all artists, except Anish Kapoor.[xix] When purchasing the “Pinkest Pink,” customers are warned that by adding the pigment to their cart they are confirming that they are:
“Not Anish Kapoor, … are in no way affiliated to Anish Kapoor, are not purchasing this item on behalf of Anish Kapoor or an associate of Anish Kapoor. [And] to the best of [the customer’s] knowledge, information and belief this paint will not make its way into that hands of Anish Kapoor.”
Semple may have a greater ownership claim in his Black 2.0, because he actually worked with the scientists to create the pigments. However, the terms of the agreement between the chemists and Semple are unclear. Because both Kapoor and Semple likely contracted with scientists for use of the colors through licensing agreements, ownership of the color does not vest completely with the artists. The labs and scientists behind the concoctions still remain entangled in the question of ownership, regardless of the level of use one artist maintains in the color. In this case, the artists are not creators but merely users.
Copyright is not an option here: Kapoor and Semple cannot own exclusive rights, as the law makes clear that “color by itself is not subject to copyright protection.”[xx] However, “[a]n original combination or arrangement of colors should be regarded as an artistic creation capable of copyright protection.”[xxi] Thus, copyright covers artistic works, such as paintings, and original arrangement of colors. Copyright does not provide monopoly to the use of a color.[xxii] Nor can the artists gain protection of the color though trademark, because the secondary meaning may not be established, and not only would the artist need to establish that the color was used in association with the good or service that the artist provided, i.e. the artwork, but also, that the artist’s identity is identifiable by that one particular color. If established, this would satisfy the secondary meaning prong, however, secondary meaning takes time to build, and the lifespan of an artist may be too short a time to procure a trademark.
As outlined above, trademark law would not cover the artists’ acquisition of colors. Kapoor and Semple have “rights” to their colors, but it is not a proprietary right to the color mark. The artists may attempt to garner state registration of the color marks, but again, the requisite establishments may not have been accomplished and protection would be inconsequential for artists such as Semple and Kapoor who necessarily work at a national and international level.
Patent Registration: Green Light
The most likely, but not the easiest, avenue to protect a color is the patent route. Yves Klein (1928-1962) is the only artist to have successfully taken over a hue, and that’s because he himself created it. International Klein Blue, or the ultramarine pigment used in Yves Klein’s art, essentially comprised Klein’s entire oeuvre, save a few photographs. Unlike Kapoor who bought the right to use his blackest-black, Klein actually invented and patented his process of creating his color after being totally absorbed and obsessed with the purity of the pigment.[xxiv] The ultramarine color became as iconic and symbolic of his identity, as the robin’s egg blue is representative of Tiffany’s high-end jewelry. In essence, Klein did establish a secondary meaning for his blue, however, he went a step beyond associating his name with the blue and took creative claim to the color under European Patent Law.[xxv] Where trademark excludes other users in the same market, and not those in different markets, patent law excludes all users across all markets from using the creation. A patent creates a true monopoly, at least for a limited period of time.[xxvi] Generally, in the United States and Europe a patent lasts about 20 years, after which it enters the public domain and is free for all to use. So although the patent provides enhanced protection while valid, this monopoly is countered by a shorter window of protection. [xxvii]
It has become clear that in the United States little can be done to claim the necessary protection under intellectual property rights. There are also policy reasons behind disallowing an artist to stake a claim on a color: the USPTO has made clear that a design patent will not be issued solely on the basis of one color,[xxx] as courts may rule that allowing artists to gain ownership of a color would stunt the creativity of the art world. The District court of Delaware even mentioned that color may not be commandeered by one user except for use as central part of distinctive trade dress.[xxxi] The patent application process is time consuming and rigorous, which may inhibit the potential for actual patent prosecution.
Ideally artists should not want to hoard a color. Response to the monetization and proprietorship of color is especially seen through the backlash Kapoor received. The art world pulses on the idea of give and take, on collaboration and sharing of inspiration as well as materials. The only scenario which came close to ownership of a color is that of Klein, where the artist properly synthesized the color and the creation. Otherwise, when color becomes property, it violates the fertile integrity of an ingenious world.
[i] 15 U.S.C § 1051.
[ii] 15 U.S.C. § 1127.
[iv] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 773 (1992).
[v] Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 212 (2000).
[vi] TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001).
[x] Quito, Anne. “Cheerios Just Lost Its Bid to Trademark the Color Yellow.” Quartz, Quartz, 29 Aug. 2017,
[xi] Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, (1991).
[xii] Raimer, Anne. “Lending Color to Trademarks: Protection and Enforcement of Color Marks in the U.S., EU, China and Japan.” Trademark Symbols, International Trademark Association, 1 July 2015.
[xiii] Eckhartt, Claus M. “Infringement of Color Marks .” INTA Bulletin , International Trademark Association , 1 May 2004, http://www.inta.org/INTABulletin/Pages/InfringementofColorMarks.aspx.
[xv] “Trademark Definition .” EUIPO, European Union Intellectual Property Office , 22 Sept. 2017.
[xvii] Madrid Protocol. USPTO.
[xviii] Munzenrieder, Kyle. “The Worlds ‘Blackest Black’ and the Hilarious Artist Feud Behind It.” W Magazine, Conde Nast , 26 May 2017.
[xx] Boisson v. Banian, Ltd, 273 F.3d 262, 271 (2d Cir. 2001), citing C.F.R. § 202.1(a).
[xxi] 1 Nimmer & Nimmer, supra, § 2.14, at 2–178.4.
[xxiv] International Klein Blue. DePaul University, facweb.cs.depaul.edu/sgrais/international_klein_blue.htm.
[xxvi] Neuendorf, Henri. “Anish Kapoor Secures Rights to ‘Blackest Black.’” Artnet News, Artnet, 29 Feb. 2016.
[xxvii] Frequently Asked Questions: Patents. WIPO; The European Patent Convention, Article 63: The Term of the European Patent. EPO.
[xxviii] Cascone, Sarah. “Anish Kapoor Owns the Rights to the Blackest Color Ever Made. Now Another Artist Is Making His Own-and It’s Even Blacker.” artnet News, artnet, 30 Jan. 2019.
[xxix] Vantablack. Surrey Nanosystems.
[xxx] Application of Iknayan, 274 F.2d 943, 944 (C.C.P.A. 1960).
[xxxi] FunnelcaP, Inc. v. Orion Indus., Inc., 421 F. Supp. 700, 712 (D. Del. 1976)
- Conradt, Stacy. “9 Trademarked Colors.” Mental Floss, 17 May 2017.
- Rogers, Adam. “Art Fight! The Pinkest Pink Versus the Blackest Black.” Wired, Conde Nast, 22 June 2017.
- Semple, Stuart. “Anish Kapoor Is Banned from the World’s Pinkest Pink Paint.” Stuart Semple, Stuart Semple, 9 Nov. 2016.
- Semple, Stuart. “The World’s Most Glittery Glitter & Why I’m Not Giving Anish Kapoor Any!” Stuart Semple, Stuart Semple, 21 Dec. 2016.
About the Author: Adelaide Saucier is a 2L at Tulane University School of Law. She has an undergraduate degree in Art History with a minor in Dance from Chapman University and hopes to pursue a legal career which incorporates her first love of art. She can be reached at firstname.lastname@example.org.
Disclaimer: This article is for educational purposes only and is not meant to provide legal advice. Readers should not construe or rely on any comment or statement in this article as legal advice. Opinions expressed here are those of the author.