Intellectual Property Law

Chapter 2 Putting It Into Words Solution

Your firm’s client would like to trademark the color black for its bottles for its salad
dressings. The black color blocks out light, which preserves the contents of the bottles for
a longer period of time. Draft a short paragraph to be inserted in a letter from your
attorney indicating whether a trademark application for such color is likely to be
successful.

“We believe it is highly unlikely that the U.S. Patent and Trademark Office
(USPTO) will register the color black for the bottles used for your salad
dressings. Marks that are functional cannot be registered with the USPTO. A
mark consisting of color is functional if it provides a utilitarian advantage to
its owner, for example, the use of orange for safety signs. The functionality
doctrine is intended to encourage legitimate competition and ensure that no
one party exclusively appropriates a color that competitors may need. In the
present case, the color black used on your salad dressing bottles provides a
useful function in that it helps extend the shelf life of the salad dressing and
preserve the contents of the bottles. Thus, the USPTO would likely refuse to
register the color black for your salad dressing bottles on the basis of
functionality. We would be pleased to review the label, graphics, and designs
used on these bottles to determine if they might qualify for trademark
protection even though the color of the bottle itself will not qualify for
registration.”