When a business owner files a trademark logo in Canada or the US, such a logo may be filed in black and white or in color.
When a logo is filed in black and white, it may be used in any color. When a logo is filed claiming color, it must used in the color it was filed.
A color claim is a limitation, which otherwise confers on the owner the exclusive right to use the mark in any color. Therefore, a color claim narrows down the protection for a mark and it is usually advisable to include such a claim only when a particular color is considered to be an important and essential feature of the mark.
In addition, a trademark logo in color is usually not the first trademark that should be filed. If an applicant files a first trademark, it’s best to file a word mark in standard characters. Such a trademark will allow the owner to use its trademark logo in any font and style. After a word mark is filed a trademark logo should be considered for filing. Of course, it may be filed at the same time as the word mark if finances allow.
Usually, only after the word mark and the logo in black and white are protected, should a logo in color be protected if necessary.
When Starbucks filed their famous color logo they already had their logo protected in black and white as well as the word mark in standard characters STARBUCKS COFFEE.
Likewise, FedEx company has a regular trademark in standard characters: FedEx, a logo in black and white and a logo in color. Their first trademark was a standard character mark and later they filed their logos. It may be possible for FedEx to claim that the use of a similar mark, “TadLx”, for example, infringes its trademark, if TadLx was in the same color scheme with “Tad” in purple and “Lx” in orange. Since they have a color logo, it may be easier for them to stop infringers.
Many other famous trademarks like Google and Apple didn’t initially claim color.
What’s the bottom line? Unless color is an essential element of your trademark logo, don’t file in color.
Below we will look at some commonly asked questions:
Q: I am a startup and want to protect my logo. Should I claim color?
A: If your company is new and color is not a distinctive element of your logo, it’s best not to claim color.
Q: When should I claim color as a feature of my trademark?
A: When your customers associate specific colors in your trademark with your products or services or when a particular color combination is very important to you.
Q: I registered my logo in color, but afterward I decided to change the color scheme. What should I do?
A: In Canada, you cannot make any changes to your logo at all. If you filed your logo in color, and later decided to use a different color, your trademark would no longer protect you. That’s one of the limitations of filing in color.
So, you will need to file a new trademark, preferably for a logo in black and white (without any color claim), if you haven’t already done so. In the US, you may be able to amend your trademark so that your logo matches the way in which you are using your trademark but if the color changed drastically, it may be considered a material alteration and then such a change will not be allowed. In this case, you will also need to file a new trademark.
Q: I am filing my first trademark. Should I file a word mark in standard characters, a logo in black and white or my color logo?
A: When you file your first trademark, it’s always advisable to file for a word mark in standard characters first. If your budget allows, file a logo in black and white as well at the same time you are filing your wordmark.
Q: I developed a logo with unique colors that I want to protect. Should I file in color?
A: In this case, you may want to file at least two trademarks: one as standard characters trademark and the other – logo claiming color.
Q: I want the broadest protection for my trademark. What should I file?
A: You have the following options to file: standard characters (word) mark, special form or stylized trademar