I am building a product to sell online. The product would be…

Hi,

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Before 2008 you would have a better chance (not to be exposed to a possible trademark infringement suit)

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In 2008 the U.S. Court of Appeals for the Fifth Circuit found that Smack Apparel violated trademark, when the court found in favor of BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY AGRICULTURAL AND MECHANICAL COLLEGE; BOARD OF REGENTS OF THE UNIVERSITY OF OKLAHOMA; OHIO STATE UNIVERSITY; UNIVERSITY OF SOUTHERN CALIFORNIA.

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In the holding the court two major criteria the universities had to meet to prove trademark infringement:

(1) to "establish ownership in a legally protectible mark," and

(2) to "show infringement by demonstrating a likelihood of confusion" between Smack's apparel and the universities' own products.

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If you read the case, you'll see that in THIS case, the court said "This creation of a link in the consumer’s mind between the t-shirts and the universities and the intent to directly profit therefrom results in 'an unmistakable aura of deception' and likelihood of confusion."

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So it can reasonably be inferred here that what will be tested (should a school take legal action against you) is (1) your intent - did you intend for your customers to buy based on a school affiliation or support and (2) the degree to which you use messages, PARTICULAR color configurations, and sell and advertise in a way that would imply a school affiliation.

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To your question, the coincidental use of color combinations alone will not be an infringement. The use of a particular color scheme that (for whatever reason) causes the buyer to associate the colors with a particular school, professional team, etc. begins to move you into the area where you may have some risk.

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Then in 2010 another layer was added by the third circuit:

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The Third Circuit held that that the color was functional and the company had failed to demonstrate secondary meaning. ERBE Elektromedizin GMBH v. Canady Technology LLC, 629 F.3d 1278 (Fed. Cir. 2010).

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SO now we see, not only the need to produce something that would NOT create a link in the consumer's mind, but the need to establish a SECONDARY meaning for those colors as well.

So, when a customer requests certain colors, it's very possible that a court would say that the link is already there, and that you are capitalizing on it.

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One idea might be to build into your ordering system the statement that, "any similarity in color combination to those of any organization is coincidental" and that by buying, the customer agrees that that the garment will not be worn in support of any particular association.

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But, honestly, that may open the door (to a legal action) even further, by showing that you are aware that this link is likely.

You've raised a very good question here ... as the courts continue to find in conflicting ways.

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From an excellent article on this by the attorneys at nolo.com ...

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"

Color protection is a recent development

It was not until recently that the United States began to protect combinations of colors or single colors by themselves—that is, without any additional text or graphics. In the 1980s, Owens-Corning registered the color pink for its fiberglass insulation and, in 1995, the Supreme Court ruled that a manufacturer of dry-cleaning press pads could claim registration for a green-gold color. (Qualitex v. Jacobson Products, 514 U.S. 159 (1995).) Also, a federal appeals court has ruled that a color combination (signifying different tensions in an exercise band) could be protected. (Fabrication Enters. v. Hygenic Corp., 64 F.3d 53 (2d Cir. 1995).)"

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Reference

Can Colors Be Protected as Trademarks? | Nolo.com. (n.d.). Retrieved from http://www.nolo.com/legal-encyclopedia/can-colors-be-protected-trademarks.html

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