Stephen A. Kennedy Intellectual Property Law Blog on Lawyers.com

           In University of Alabama Board of Trustees v.
New Life Art,[1]
the U.S. District Court for the Northern District of Alabama recently considered
the issue of whether the University of Alabama had trademark rights in its
school colors of “crimson and white.” 
Alabama’s board of trustees sued painter Daniel Moore, an artist renowned
for his oil paintings of great moments in football history.

            In deciding cross-motions for
summary judgment, the district court noted that the colors of the University of
Alabama’s uniforms alone are a weak
trade dress mark, that the colors alone “do not lend themselves to [trademark]
type designations; nor would the general public usually consider them to be
“marks.””[2]
Consequently, summary judgment for the University of Alabama was denied. In
contrast, the court concluded that Moore was entitled to prevail on summary
judgment on his defenses of the First Amendment, fair use, and the right to
artistic expression. Even if there were some likelihood of confusion, the
balancing of such likelihood and the public interest allowed Moore to prevail.
The case is now on appeal to the U.S. Court of Appeals for the 11th Circuit.
Twenty-seven other universities have submitted an amicus curiae brief in
support of protecting uniform colors.

            While the issue of the likelihood of
confusion was thoroughly covered at the district court level, the court only
made a casual mention of the functional aspect of university color schemes.[3]
The Lanham Act prohibits trademark registration for any mark that “comprises
any matter that, as a whole, is functional.”[4]  Aside from their purely utilitarian function
of distinguishing members of one team from members of another, university color
schemes are communicatively functional. Communicative functionality is the use
of a mark to communicate a non-source related meaning, including social
meanings. Loyal alumni often wear their school colors while attending
collegiate athletic events to communicate their affinity for a particular team.
Colloquially, one might accurately say that crimson and white are the
University of Alabama’s “trademark colors.” However, wearing these colors to
university sporting events communicates support for the University of Alabama
Crimson Tide outside the linear realm of commercial trademark use. 

            Colors are almost always functional
from a utilitarian, aesthetic, or communicative perspective. The fact that they
may also have a secondary meaning does not automatically overcome the barrier
of the functionality doctrine.  For
further commentary on this issue, see
Shades of Gray: The Functionality
Doctrine and Why Trademark Protection Should Not be Extended to University Color
Schemes 21 Marq. Sports L. Rev. 101 (2010).