The average consumer has probably heard of terms like “trademark” and “copyright” before, but what falls under trademark?  Do colors or color schemes fall under the category of a trademark?  The answer may surprise you.

Trademarks and service marks are “any word, name, symbol, or device, or of any combination thereof” that identify and distinguish a mark owner’s goods or services from those manufactured or sold by others.  They act as source indicators of the goods or services provided by the mark owner.  See 15 U.S.C. § 1127.  Dilution occurs when an infringer uses a mark similar to that of a famous trademark, thereby lessening or reducing a consumer’s ability to differentiate between the goods and services of each.

A particular color or color scheme can be deemed protectable if the mark owner can show that consumers have come to associate the color(s) with the origin of the goods.  In Deere & Company v. Fimco Inc., 239 F. Supp. 3d 964 (W.D. Ky. 2017), a manufacturer of tractors and agricultural equipment sued a manufacturer of lawn sprayers for using Deere’s inherently distinctive green and yellow color combination and pattern.  Deere held three trademark registrations pertaining to their recognizable green and yellow color scheme for: (1)  “agricultural tractors, lawn and garden tractors, trailers, wagons, and carts” specifically with green bodies/frames and yellow wheels; (2) green and yellow “wheeled agricultural, lawn and garden, and material handling machines”; and (3) “tractor-towed agricultural implements,” including “fertilizer spreaders” and “nutrient applicators.”

FIMCO, which primarily manufactures lawn and garden sprayers, sold agricultural equipment in multiple colors, including green and yellow.  Deere sought a permanent injunction ordering FIMCO to cease using yellow tanks or wheels in connection with wheeled agricultural equipment having green vehicle bodies. FIMCO asserted that all three of Deere’s registered trademarks referenced only a green body and yellow wheels, but did not mention anything about yellow tanks; and because all of Deere’s product depictions indicated green bodies with yellow wheels, Deere had no right to the exclusive use of yellow tanks. Deer countered that the focus of the analysis should be on whether the use of identical shades of green and yellow on similar equipment creates a likelihood of confusion.  They stated that although its trademark registration was silent on the color of the tanks, this did not prove that FIMCO did not infringe on Deere’s trademark rights.  The court agreed with Deere and stated that for a likelihood of confusion or dilution claim, FIMCO’s use of the green and yellow marks need not be identical to Deere’s—it just had to be similar enough.

After a week-long bench trial in October 2017, the District Judge held that FIMCO intentionally infringed and diluted Deere’s trademark rights through its use of the green and yellow color scheme in order to create an association with Deere’s brand.  The Judge found that the tractors and sprayers were closely related and sold in the same marketing channels, and evidence showed actual consumer confusion about whether Deere manufactured or endorsed the FIMCO agricultural equipment.  At trial, FIMCO’s CEO even referred to the color combination as “the John Deere colors.” The court also found that the yellow and green scheme had become sufficiently famous since the late 1960s to allow Deere’s trademark dilution claim to succeed (a famous mark is a prerequisite for a dilution claim).

Interestingly, FIMCO attempted to assert a defense of “aesthetic functionality” arguing that it should not be held liable for using the Deere color scheme because using those colors was required to satisfy the needs of its customers who wanted to match their product purchases to their Deere tractors.  Rejecting that argument, the court found that FIMCO failed to explain why consumers would not be able to view another color scheme as a comparable alternative.  The court stated that “[Defendant’s] intent to create an association with John Deere green and yellow tractors due to farmers’ ‘desire to match’ is precisely one of the factors the Court finds weighs in favor of a finding of likelihood of dilution in this case.”  The court concluded that because it is only the combination of green and yellow together that is protected, FIMCO could use the colors green or yellow independently or combined with other colors, but was permanently enjoined from using the exclusive combination of yellow and green.

Although Deere was successful in trademarking a color combination, such a feat is rare. Consumers must visually equate the specific color or color scheme with that brand, which is often more finite than you would think.  While the specific combination of a green chassis with yellow tires was enough to fall under John Deere’s trademark, just yellow tires on farming equipment might not meet the threshold.