Should you claim color in your trademark application?

When filing a trademark application, clients often wonder if they should claim color.  The answer depends on the so called “likelihood of confusion.”  If you are a relatively new company and color is not really a distinctive element of your trademark, it is probably best not to claim color.  A trademark presented in black and white without claiming color is presumed to cover the mark when presented in any color.
If on the other hand, color in your mark is an essential part of your mark, to the extent you want to prevent others from using your color scheme with different words/characters, it is advised to make a claim for color in your trademark.  Take “Mobile” for example, where the “o” is red and the “M-bil” is blue. They registered both as a word mark and in color, to preclude others from using “Mebil” (word mark) and also “Force” with the “o” in red and the “F-rce” in blue.
Similarly, Federal Express has various registrations on the mark FedEx with “Fed” claimed in purple and the “Ex” claimed in orange. Therefore, it is be possible for FedEx to claim that the use of “MadFx” infringes its trademark, if MadFx was in the same color scheme where “Mad” was in purple and “Fx” was in orange. This claim is not guaranteed, but FedEx would have a better chance if they have a registration claiming color, than if they did not.
However, note that when filed in early 80’s, “FedEx” did not make any claim for color. Its registration initially made a standard character claim to “FedEx,” alone without any claims to style or color.  This is because standard character marks cover the words/characters in any font stylistic arrangement or color.  Standard character marks are broader than special form marks claiming style elements, logos, or color.  In fact, many other famous companies such as Starbucks, Google, and Apple did not initially claim color.
In conclusion, for your first federal trademark application it is best practice not to make a claim for color, unless color is very important.   If color happens to be very important, you may want to file two applications, one as standard character and one claiming color.
By Dorisa S. Hanrahan, Esq.

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