The Josh Kagan Blog

T-Mobile Claims to Own the Color Magenta

The writers of Engadget Mobile, a technology weblog that reports on wireless phones and carriers, reported today that they have received a letter from Deutsche Telekom, the parent company of T-Mobile.  In the letter, attorneys for Deutche Telekom ask that Engadget stop using the color magenta in the blog’s logo and headings because it threatens to dilute Deutche Telekom’s trademark.

Trademark law is intended to protect the public from confusion in the marketplace while protecting merchants who have spent time, energy, and money in presenting a product to the public.  A typical action for trademark infringement would require that there be some competition between the owner of the mark (here Deutche Telekom) and the using party, and–most importantly–some likelihood of confusion, mistake, or deception of consumers.  But here, T-Mobile and the Engadget blogs are not in competition with one another.  Each company provides very different products and services.  There’s also virtually no chance that a consumer could ever be confused about whether an Engadget blog was a service of T-Mobile, or vice versa.  Trademark infringement protects a trademark owner from having his or her mark used in connection with competing goods and services.  It does not, however, prohibit another from using that mark in connection with non-competing goods and services.  So long as the trademark is used in connection with goods and services that do not compete with the goods and services of the trademark owner, the trademark has not been infringed.  But Deutche Telekom is not claiming “infringement” here; they’re claiming “dilution.”  ”Dilution” under the U.S. Federal Trademark Dilution Act is a separate action that is available to provide protection even absent infringement, in response to trademark blurring and tarnishment of famous marks.

Let’s assume that the T-Mobile mark is sufficiently famous to qualify for protection under the Trademark Dilution Act.  To maintain a cause of action for trademark dilution, Deutche Telekom would need to show that Engadget Mobile’s use of the color magenta blurs the distinctiveness or tarnishes the trademark it holds.  The logo of the T-Mobile brand includes a solid magenta “T” with three horizontal gray squares; the logo of the Engadget Mobile blog includes the word “mobile” in graded magenta with three magenta rectangles in a vertical line that have been styled to mimic the signal bars on a wireless phone’s display.  ”Blurring,” the most basic kind of dilution, occurs when the use of a mark is “blurred” from association with only one market (here cellular phone services) to signify other products in other markets (here a weblog about mobile phones).  In Toys R Us v. Feinberg, the U.S. District Court for the Southern District of New York clarified that “blurring” occurs when a use of a mark lessens the capacity of a trademark owner’s identify and distinguish their goods or services.  26 F. Supp. 2d 639, 644.  Ergo, the obvious question here is whether the use of the color magenta in a blog about mobile phones would cause any “blurring” of T-Mobile’s mark.  Setting aside any feelings we might have about T-Mobile effectively claiming ownership over a color, does Engadget’s use of that color as an accent on its weblog affect the effectiveness of the magenta accent in T-Mobile’s branding?

Probably not.  The weblog’s use of magenta is not solid and pervasive like T-Mobile’s.  On my notebook computer’s display, it’s not even the same shade of magenta.  It is merely a one-off use of magenta in a logo.  Deutche Telekom might have a case if the Engadget Mobile weblog used design elements like gray squares in horizontal lines, or used magenta pervasively in the same way that T-Mobile’s materials use it, but the use of a similar shade of magenta probably would not be enough because it does not lessen the “punch” that T-Mobile’s magenta branding has on its website, stores, and marketing materials.  Under the controlling authority of Toys R Us and other dilution cases, a court would probably not allow Deutche Telekom to limit the ability of a non-competing website to use the color magenta in a way that does not mimic T-Mobile’s use of the color as a pervasive accent throughout its branding.

Disclaimer: This weblog is an informational resource only. It is not designed to offer legal advice.