Stuart Semple is looking at #FreeTiffany. In order to ‘unleash’ the iconic hue of Tiffany & Co., the British artist created a ‘high quality super flat matte’ acrylic paint that mimics the robins-egg blue of the New York jewelry brand, and recently offered 150 ml tubes for sale on his ecommerce site for $ 28, all of which have since sold out. The project’s goal ? Make “this once inaccessible color” accessible to “all artists to use in their creations”. Speaking of his desire to adopt Tiffany Blue, Semple states on his website that “the iconic Tiffany Blue was created by Charles Tiffany and John Young in 1837 and is a trademark color that requires a license to use. “. While “a lot of companies have branded colors, like T-Mobile’s magenta or Coca Cola red,” what Semple says “makes Tiffany Blue different is that his brand has been around in all uses since. 1998, and they even hid the Pantone code ”.

The adventure specific to Tiffany de Semple – and in particular, the language he uses to describe the project – is interesting, and gives the opportunity to delve into the offer of the brands to monopolize the colors for the purposes of their offers. specific and often their marketing, if for no other reason than this language greatly exaggerates the rights that Tiffany & Co. actually maintains in the specific blue tint (and the rights that brands can reasonably expect to have in a color mark). ).

While Semple claims that “the iconic Tiffany Blue has been held firmly in the hand of Tiffany & Co.” because the jewelry company owned by LVMH has held trademark rights “for all uses since 1998”, this may not necessarily be true depending on how trademark rights are amassed in the United States and how Tiffany & Co. actually uses the blue tint. “In the United States, it is possible, under certain circumstances, to register a color as a trademark,” wrote Dana Dickson, trademark attorney and former trademark examiner for the United States Patent and Trademark Office (“ USPTO ”), in a recent article. After all, in Qualitex Co. v Jacobson Prods. Co., a landmark case centered on the green-gold color protection ability of Qualitex’s dry cleaning press pads, the Supreme Court has explicitly stated that a color can be registered as a trademark, as long as it identifies a single source for the products / services involved.

In short: an individual color can be legally protected as a trademark, assuming that the use of the color is not functional and the mark at issue can establish that consumers have come to associate the color with a single source. rather than just the products or services themselves.

Not exactly an effortless endeavor, Cowan, Liebowitz & Latman’s attorney Dasha Chestukhin noted that “acquired distinctiveness (also referred to as ‘secondary meaning’) can be extremely difficult to establish” when it comes to colors, because “generally, color takes a while to be recognized as a source indicator. However, it is not impossible to establish the required level of distinctiveness. Christian Louboutin, for example, retains the trademark rights to Pantone 18-1663TP for use on the soles of contrasting-colored shoes. Cartier has rights in a different shade of red for use on certain product packaging, namely, in connection with its sale of jewelry; Hermès holds trademark rights in its specific “shade of orange” for use on packaging in connection with the sale of ready-to-wear, leather goods and other products; and even Glossier has claimed rights to specific uses of the millennial rose… to name just a few examples.

Yet even though a trademark may accumulate such rights and the corresponding trademark registrations, it is “not a general authorization to use that color on any object in any way and to prevent anyone from dying. ‘use that color in any way, “says Dickson, further asserting that the USPTO has made it clear that” color marks are marks that consist only of one or more colors used on particular objects. ” Or – in other words, “Registration is not for color in the abstract (used on anything and everything to indicate the source of every imaginable product and service)”, and instead , these protections only extend to: “(1) use color on a particular object, [and] (2) in order to identify the source of only the goods / services indicated in the [party’s trademark] request ”and / or registration.

A quick look at the trademark registrations Tiffany & Co. makes – and doesn’t – in the United States is revealing of how it uses and describes its brands. Instead of a registration for a simple color sample, for example, the company has registrations for word marks, such as “Tiffany Blue,” which it uses in connection with “jewelry featuring the color blue as a integral component of jewelry “, and” Tiffany Blue Box “for use on jewelry. With respect to its other color-centric brands, Tiffany has a multi-class registration for “a shade of blue often referred to as Robin’s Egg Blue that is used on boxes” in the sale of jewelry, perfumes, clothing. certain leather goods, tableware and stationery, among others, as well as related retail store services.

Tiffany also has registrations for the use of its blue tint on “jewelry pouches with cords” in the class of goods which extends to “jewelry” (ie class 14); on shopping bags – again in connection with the sale of certain categories of products; in connection with retail store and mail order catalog services featuring jewelry, among others; and on metal fasteners for use on non-metal key chains.

Simply put, while Tiffany & Co. may keep records for a range of uses of its blue, they are all specific – and relatively narrowly defined – and in fact, ultimately, the rights of the business are limited to the uses it actually makes and consistently. color, because trademark rights arise and are maintained through actual use of the trademark and not under USPTO-issued registrations. As such, Tiffany is unlikely to prevent artists from using her blue hue or similar versions of the color for their work, assuming that work does not confuse consumers as to possible involvement or affiliation. with Tiffany & Co.

Still, it’s also worth noting that based on court records in the United States, Tiffany does not appear to be abusing any rights she has in her blue, and in fact, is not overly contentious, apparently reserving the lawsuits in in terms of brands it has initiated. in recent years to fight outright counterfeiters, such as website operators like besttiffanyco.com and Costco. Tiffany ”, thus confusing consumers.

In this context, brands (and artists too) would be wise to take up Semple’s assertion that “it is ILLEGAL for you to paint with [Tiffany blue] because it’s a trademark in all categories ”- and the idea that a color can actually benefit from such extensive trademark rights – with a grain of salt, and focus all branding efforts focused on color on the reality that color marks are, in fact, protectable, but are subject to specific and often narrow fields of application.

Barely Semple’s first foray into taking famous hues and turning them into paint for purchase, he has made headlines in recent years after “making the blackest black paint and ink you can buy. in revenge for Anish Kapoor’s control over the coveted Vantablack, “as DesignTaxi put it. this this week. The move follows news in 2014 that artist Anish Kapoor has acquired the exclusive license to use Vantablack, the military-grade super black coating, from patent owner Surrey NanoSystems. “Kapoor’s decision to withhold material from his fellow artists sparked outrage from the international artist community,” Artnet reported at the time. Simple, included. He went on to create what he called the “pinkest rose” and forbid Kapoor from using it.