BY DESIGN 1995-02-20

Elinor Selame

Choosing the colors to be used in packaging has always been an important part of creating the right brand image. Today, however, brand marketers have to take into account more than aesthetics. They also have to consider legal issues.

How a product is packaged falls under a specialized branch of trademark law known as "trade dress." In recent years, the scope of protection under this law has expanded. Today, most courts recognize that a product's appearance can serve as a trademark if the appearance is nonfunctional and if it has secondary meaning. The value of a trademark, of course, is that it offers protection from copycats.

Color is part of trade dress. There has long been sufficient legal protection for color when used as part of a symbol or design, such as Coca-Cola's use of red and white markings in its logo. More complex is the issue of claiming a legal right to the exclusive use of a particular color.

Some courts have granted trademark status to color, arguing that color identifies a product and distinguishes it from the competition. Both Fuji Film and Kodak are owners of colors legally protectable in their field. Even without trade names for cues, consumers could identify Fuji film by its green and white color scheme, Kodak by its red and yellow color scheme. In both cases, color has acquired distinctiveness, or secondary meaning.

Other courts have held that color cannot be trademarked. The 7th Circuit Court of Appeals in Chicago, for example, denied NutraSweet Co. trademark protection for the pastel blue color of its Equal brand sweetener packets. The court ruled that color is not subject to trademark protection unless incorporated into a symbol or design.

This would reduce the possibility of courts having to grapple with the concept of shade confusion. Under this theory, granting protection to individual colors would put the courts in the position of having to determine whether use of a different shade of the same color constitutes infringement. Another oft-used argument against trademarking colors is color depletion -- the idea that there is a limited number of colors to go around (even though the National Bureau of Standards has recorded 7,500 color names).

The Supreme Court is still trying cases to decide whether companies can claim a legal right to exclusive use of color for a product or a package. In light of this, companies would be prudent to build into their brands several protectable features, including trade names, trademarks and, where possible, structure and overall graphic design. Incorporating a specific color into a unique trade dress will be more valuable than depending on color alone.

Choosing which colors to use should be a strategic decision. Coca-Cola, once owned the color "pink" in the diet cola category -- usually an enviable position. But pink was defined as a feminine color, and Coke wanted to appeal to male consumers as well. Tab had to go. It was replaced by Diet Coke in red and white colors. The lesson to be learned: Colors must be compatible with product positioning.

All of this and more are part of the important decision-making process of determining which color to use and why.

Elinor Selame is president of BrandEquity International, a brand identify and package design consulting firm based in Newton, Mass.