I. Introduction

Trademark protection for color schemes is once again in the news. On November 2, 2009, the United States District Court for the Northern District of Alabama issued a memorandum opinion in University of Alabama Board of Trustees v. New Life Art,2 a case addressing the issue of whether the University of Alabama (“UA”) had trademark rights in its football team colors. The UA Board of Trustees sued painter Daniel A. Moore, an artist who has gained recognition for his oil paint renditions of famous moments in American football history. Moore had previously signed a licensing agreement with UA in 1991, but in 2000, he decided that his paintings did not require a license. UA disagreed, insisting that its uniform colors of crimson and white are protectable trade dress.

The district court, in deciding cross motions for summary judgment, noted that the colors of UA’s uniforms in Moore’s paintings may be a weak trade dress mark and that those paintings may create a likelihood of confusion, and thus summary judgment would not be appropriate on those issues alone. However, the court concluded that Moore was entitled to prevail on summary judgment on his defenses of the right to artistic expression, the First Amendment and fair use, noting that even if there were some likelihood of confusion, the balancing of such likelihood and the public interest entitled Moore to prevail. The court was careful to note the distinction between trade dress protection of uniform colors and UA’s registered marks, including symbols and logos — the latter category clearly being protectable. The case is now on appeal to the Court of Appeals for the Eleventh Circuit. Twenty-seven other universities have submitted an amicus curiae brief arguing for the protection of uniform colors.

II. Background

A. Trade Dress Basics

Section 43(a) of the Lanham Act provides the statutory foundation for trademark and trade dress causes of action, prohibiting the sale of goods by use of:

any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [the seller] with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . .3

Case law has made clear that Section 43(a) provides a cause of action for trade dress infringement, and is not limited to registered marks.4

Trade dress has been defined by courts as “the total image or overall design or appearance of a product or its packaging.”5 Thus, trade dress “involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”6

The United States Supreme Court clarified in Two Pesos v. Taco Cabana (a dispute involving respective vivid tropical-themed paint and décor schemes in rival Mexican restaurant chains) that to make out a prima facie case for trade dress infringement, a plaintiff must establish three elements. First, the design must be nonfunctional, as functional elements of a product’s trade dress are not protectable.7 Second, the design must either be inherently distinctive or distinctive by virtue of having acquired secondary meaning.8 Third, there must be a likelihood of confusion.9

The test for whether trade dress is inherently distinctive has been adopted from the trademark context. In Abercrombie & Fitch v. Hunting World, the Second Circuit classified marks as either generic, descriptive, suggestive, arbitrary or fanciful.10 Suggestive, arbitrary, or fanciful marks are almost always inherently distinctive because they “serve[] to identify a particular source of a product” whether or not they have acquired secondary meaning.11 Descriptive marks must be shown to have acquired secondary meaning before they are eligible for protection.12 Generic marks never merit protection.13

If a plaintiff cannot show inherent distinctiveness, he must demonstrate that the trade dress has acquired secondary meaning.14 Secondary meaning exists when “in the minds of the public, the primary significance of [the product design] is to identify the source of the product rather than the product itself.”15 Put another way, “[a] plaintiff’s trade dress acquires secondary meaning when the purchasing public associates the dress with a particular source.”16

Finally, the last element in a cause of action for trade dress infringement is likelihood of confusion. Courts apply a traditional trademark analysis to the issue of likelihood of confusion in trade dress cases. Factors relevant to this inquiry differ slightly in language from circuit to circuit, but generally include (1) similarity of the conflicting designations, (2) proximity of the competing parties’ products or services, (3) strength of the mark, (4) marketing channels used, (5) degree of care likely to be used by customers purchasing the goods or services, (6) a party’s intent in selecting the mark, (7) evidence of actual confusion and (8) likelihood of expansion in product lines.17

B. Trade Dress Protection for Colors

As the Supreme Court held in Two Pesos, colors may give rise to trade dress protection.18 Indeed, the Supreme Court has held that green-gold used on dry cleaning press pads was a protectable trademark because the color had acquired secondary meaning in Qualitex v. Jacobson Products.19 Other courts have likewise held that color may give rise to a protectable mark. For example, the pink color applied to fiberglass insulation produced by Owens-Corning Fiberglas Corporation was held a valid mark by the Federal Circuit because it had acquired secondary meaning.20

A plaintiff attempting to enforce a color mark must meet the three elements discussed in Two Pesos. First, the color must not be functional.21 In Saint-Gobain v. 3M, The Trademark Trial and Appeal Board held that a deep purple shade for coated abrasives was functional, noting that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”22

Although color marks may acquire secondary meaning, the Supreme Court in Wal-Mart v. Samara Brothers stated that they can never be inherently distinctive.23 Thus, in order for a color mark to be protectable as trade dress, it must acquire distinctiveness. Finally, just as in all other trade dress infringement actions, a plaintiff must show that there is a likelihood of confusion because of the color mark.

C. Trade Dress in Sports Uniforms

In 2004, four universities sued a t-shirt manufacturer, Smack Apparel, in LSU v. Smack Apparel,24 after Smack Apparel allegedly sold six t-shirts containing colors, images and slogans related, among other things, to Oklahoma and LSU's match-up in the 2004 Sugar Bowl. For example, one of the shirts, while not containing any of LSU’s registered trademarks, was colored in the school’s customary purple and gold team colors. Another shirt was scarlet and gray — evoking Ohio State — along with a map of Ohio and the phrase “Got Seven? We do! 7 Time National Champs.”

In 2006, the United States District Court for the Eastern District of Louisiana found for the universities on their trade dress infringement claim regarding the color schemes of the universities’ football uniforms, finding all three elements required by Two Pesos — nonfunctionality, distinctiveness by acquired secondary meaning (via the Abercrombie classification scheme) and likelihood of confusion.25 The court held “that plaintiffs have established secondary meaning in their particular color schemes, logos, and designs.”26 In addition to the fact that the universities had used their respective color schemes for a long period of time, the court noted that “[t]he universities advertise items with their school colors in almost every conceivable manner, and . . . the universities’ school colors have been referenced numerous times in magazines and newspapers. The universities have even used the colors to refer to themselves, i.e., LSU sometimes refers to itself as the ‘Purple and Gold.’”27

In its likelihood of confusion analysis, the court concluded that “the universities’ color schemes, logos, and designs are extremely strong marks,”28 and that “[t]he stronger the mark, the greater the protection it receives because the greater the likelihood that consumers will confuse the junior user’s use with that to the senior user.”29 After a thorough discussion of the other factors relevant to likelihood of confusion, the court concluded that plaintiffs had established a likelihood of conclusion.30 The court also briefly discussed the nonfunctionality element in the infringement analysis, concluding that the universities had demonstrated that their color schemes, logos and designs are not functional.31

Smack Apparel appealed to the Fifth Circuit, which affirmed the trial court’s decision.32 In regard to the secondary meaning analysis, the court noted that the trial court’s finding of distinctiveness by acquired secondary meaning was “consistent with the importance generally placed on sports team logos and colors by the public,”33 and further noted that the “desire by consumers to associate with a particular university supports the conclusion that team colors and logos are, in the minds of the fans and other consumers, source indicators of team-related apparel.”34 In regard to the likelihood of confusion analysis, the Fifth Circuit affirmed the district court’s analysis of the relevant factors, “particularly the overwhelming similarity of the marks and the defendant’s intent to profit from the [u]niversities’ reputation.”35 Moreover, the court stated that “[t]his creation of a link in the consumer’s mind between the t-shirts and the [u]niversities and the intent to directly profit therefrom results in ‘an unmistakable aura of deception’ and likelihood of confusion.”36

III. University of Alabama Board of Trustees v. New Life Art

The U.S. District Court for the Northern District of Alabama has come to a somewhat different outcome from that of the Fifth Circuit in University of Alabama Board of Trustees v. New Life Art. Although the district court’s ruling on the parties’ motions for summary judgment did not reach the merits of whether UA had made out a prima facie case of trade dress infringement —stating only that there may be acquired secondary meaning and likelihood of confusion— the court did hold that the artist Daniel Moore's defenses on the theories of freedom of artistic expression, the First Amendment and fair use superseded any potential trade dress rights in the University’s uniform color schemes.37

However, the court made a number of telling comments when discussing the issues of likelihood of confusion, secondary meaning and functionality. For instance, the court noted that UA’s uniforms and color schemes are “descriptive at best,” and that a number of other Division 1-A football teams have crimson as part of their colors.38 This suggests a significantly different approach from the way color schemes were characterized by the Fifth Circuit in LSU v. Smack Apparel. Additionally, in discussing functionality, the court noted that “[f]ootball uniform colors clearly perform a function. They help avoid confusion as to team members for the benefit of officials, opposing team members, and spectators.”39

In discussing Moore’s defenses, the court relied on Boston Professional Hockey Association v. Dallas Cap & Emblem Manufacturing40 for the proposition that there is a distinction between fine art and product sales involving “cards, T-shirts, cups, mugs, posters, mini prints, calendars, etc.”41 Because Moore created works of fine art, a point that plaintiff did not dispute, the court concluded that the “depiction of the uniforms in the paintings [was] incidental to the purpose and expression of the paintings.”42 Following the so-called “Rogers test,” which states generally that the Lanham Act should apply to artistic works only if “the public interest in avoiding consumer confusion outweighs the public interest in free expression,”43 the court concluded that the public interest outweighed the likelihood of confusion.44

Finally, the court suggested that Moore’s paintings were a fair use. The court, citing International Stamp Art v. U.S. Postal Service,45 stated that “[a] fair-use defense is established if a defendant proves that its use is (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.”46 The court concluded “[t]here is no substantial evidence here, as to the artistic paintings and prints, that the defendants implicated the source-identification function that is the purpose of the trademark. The defendants used their own marks to identify the source. This is evidence of good faith.”47

IV. Conclusion

Depending on one’s viewpoint, the UA Board of Trustees v. Moore case either marks a new trend in trade dress protection for color schemes or is completely reconcilable with LSU v. Smack Apparel. In support of the latter viewpoint, one can point to clear distinctions in the facts — Smack Apparel involved T-shirts, typically a very commercial souvenir item that may be profitably sold by the rights owners, while Moore was painting fine art. Along these lines, the court specifically stated in the UA case that the holding would not cover mugs or T-shirts replicated with the same fine art prints. On the other hand, the UA court also arguably suggested, albeit subtly and in dicta, that UA may not have much assertable trade dress protection for its uniform color schemes. It characterized UA’s color scheme as “descriptive at best,” and stated that uniform colors have functionality. Whether this more skeptical view of the protectability of university athletic color schemes rises to the level of a circuit split with the Fifth Circuit will become clearer when the Eleventh Circuit issues an opinion on the appeal.