Trademark Issues

By DNStout August 5th, 2011

How many times have you been told that the client’s colors “are not on our palate”??

Palate?

Cities like Santa Barbara and Palm Desert have color palates. I was serving on the Board of Directors for California Sign Association (CSA) back in the 90′s when I was made aware of a federal law called the “Lanham Act” (listed on our recources tab on the web site (www.dbsinc1.com) under Trademark Issues). It basically states that city or state municipalities can not force you to modify a registered TM. The kicker is…it seems that most coporate attorneys are not aware that they can call out colors specifically in a TM application. Believe me, you can…I have seen them.

The city can tell you how many signs, the allowed locations of the signs, the size, etc. but they can NOT make you change the color(s) IF the TM has the color called out.

The city of San Clemente wanted me to change the yellow “Happy Star” on a Carl’s Jr. to a coral color until I asked the planner for the business card of the city attorney.

By the time I got back to the office, I had a message on my phone that stated the city had changed their mind.

Payless Shoesource had to actually sue the city of Palm Desert when they demanded that the sign colors be changed to a “desert tone”.

CSA attorney met with the city attorney and explained that the colors were protected under the Lanham Act (they were registered correctly), and the city attorney agreed. When he explained the fact of the matter to the city council, they told him that they would comply (as other brands did) and to let it drop. When they were served, they backed off and let PSS proceed with their colors. It’s too bad some cities make it so hard to obey they law of the land.

If you have a client that is very protective of their colors (which they all should be), have them check their TM and make sure that they are called out with the paint number or the PMS match. If you run into a problem in a city, it is best to talk it over with the city attorney or the head of the Planning Dept and make them aware of the Lanham Act. The counter people do not usually have the knowledge or the authority to do anything about it.

If you need help in researching the TM, drop me a line and maybe I can help.