Should I Protect My Company’s Colors?

Richard Rimer

February 6, 2023

Your former business partner is starting a competing business. He’s planning to use similar color schemes and a brand name that’s not that different from yours. You’re concerned that he will steal your clients. What can you do? If you’re Subway, you’d sue him for #trademark#infringement.

The test for trademark infringement is likelihood of confusion. The two primary factors are the similarity of the names, logos, etc. and the relatedness of the products or services sold under the brand. Today I’m focused on the first factor.

When trying to determine the similarity of brands, you need to look at the entirety of the brands. This means you should consider all of the elements of the brand that are unique to the brand. Most people think of looking at names to see if they are similar in sight, sound or meaning. It often makes sense to look at other elements such as the font used, the placement of the words and the color scheme. Looking at these additional elements can help you determine whether or not the public is likely to confuse two brands.

In a recent Subway case, a former franchisee decided to open a sandwich shop named Suberb. They used a similar green and yellow color scheme, had similar sandwich names, and even copied material from Subway’s web site. Subway sued and Suberb asked for some time to rebrand. They kept the name Suberb, but changed color scheme, sandwich names and the web site. The court held this rebrand was not infringing, that Subway could not own the letters “sub” for a sandwich, and that “erb” was not similar to “way.”

Subway relied on its rights in colors and other secondary branding elements to keep a competitor from confusing the public. I encourage my clients to start with registering rights in critical elements like their company name, but over time they should seek protection in color schemes, fonts, related designs and other items they use to help the public identify them in the marketplace.

And yes, this is yet another example of brand wars in the #foodandbeverage industry.