Being a business litigation lawyer in Los Angeles for sometime I often find that people are confused about just what is a trademark. Under the modern definition of the term trademark a trademark is a designation used to identify and distinguish the goods of a person. Thus the role that the designation must play to become a trademark is to identify the source of one sellers goods and distinguish that source from other sources.

That seems simple enough but where does the analysis end. The test for trademark infringement is whether a junior user can use of a mark or symbol is likely to cause confusion as to the source, sponsorship, origin, or affiliation of a senior user. In other words, if an average consumer sees a symbol, brand or logo of one company will he or she think those goods are goods of another more famous or well known company.

The test to determine trademark infringement is not always so simple. There is a trilogy of sight, sound and meaning. One court held that the trademark Cyclone infringed upon the earlier trademark Tornado because both marks conveyed the same or similar meaning. Slight variations between marks may sound alike when pronounced which can cause confusion between the two different companies. This is especially true if the goods are somewhat related or sell to the same core market of consumers.

I recently received a call from a company wanting to brand a line of clothing that was concerned whether the font type they wanted to use for their brand name along with the colors of their goods infringed upon a well known and established brand.

The issue is whether a seller can legitimately obtain exclusive rights under the law of trademarks in a single color of its products. There have been cases where the courts held that a single color can become a registered trademark but there was some caution and possible defenses in a trademark infringement litigation case that may follow.

The traditional rule was that a single color of a product was not capable of protection as a trademark. The traditional rule was supported by the rationale of color depletion and shade confusion. The thinking was that there are only a few easy discernable colors and once all are taken by an industry, the new entrant will be deprived of an element of competition.

It currently appears that in order to obtain the exclusive rights to a color it cannot be divorced from a product. In other words you cannot get the exclusive rights in a color per se. For example, a company might be able to establish trademark rights in the greenish-gold color of a cleaning press pad cover, but a company that makes and sells a product could not legitimately claim exclusive rights to use a particular color in any fashion whatsoever in advertising the product or packaging the product.

There have been cases where companies have obtained federal registration on colors. Our high court said: If color is made the essential feature, it should be so defined, or connected with some symbol or design, that other manufacturers may know what they may safely do.

Some products are well known just by their color. The color pink for fiberglass insulation made by Owens-Corning was allowed to be registered as a federal trademark upon proof of secondary meaning. Secondary meaning is when a character, symbol, logo or mark becomes famous to the point where consumers make a mental association with that symbol to a particular product.

Usually secondary meaning is established through extensive advertising. Owens-Corning embarked on an aggressive Pink Panther advertising campaign. The court held the color pink had no utilitarian purpose and did not deprive competitors of any reasonable right or competitive need. Whether a color will pass the test for trademark registration is whether the particular color is distinctive to that particular product.

Other courts have limited the finding in the Owens-Corning case and have followed the traditional rule. One example was when the court in the Ninth Circuit found that granting exclusive rights to the color yellow for a standard container stipulated to be of a utilitarian shape would be tantamount to giving a trademark on a color per se, which violates the color depletion rule.

It appears the difference in the Owens-Corning case was that there was no competitive need in the insulation industry for the color pink to remain free for competitors to use and there were extraordinary and intense advertising campaigns featuring the Pink Panther cartoon character which established secondary meaning.

What is illustrated here is that there are no simple answers. The best advise when you are selecting a trademark is too find a mark that is very distinctive and then take efforts to create your own brand recognition.