74 Am. U. L. Rev. 1255 (2025).

Abstract

Can a brand own a color? Trademark says yes, with some caveats. A brand can own a color so long as the color points to the brand as the origin of the goods and is non-functional. One of these caveats, functionality, is increasingly relevant because of color’s value for our pop culture. Color is a common cultural resource and, whether it’s a pink Barbiecore summer or a BRAT green summer, the colors brands remix to communicate the origins of their goods become a part of consumers’ expressions of identity, their links to communities, and help embody consumer values. To compete for these consumers, brands need to access the colors that matter to them. We have a test in trademark law, aesthetic functionality, that filters colors linked to traditional cultural events like Valentine’s Day and Halloween out of a brand’s control. But aesthetic functionality overlooks pop culture because pop culture may be closely connected to a brand’s reputation. Aesthetic functionality’s failure to fully consider brands’ cultural presence compromises consumers’ access to culture today and, by extension, has a negative effect on competition for consumers’ attention. In this Article, I argue that we need an additional functionality defense, cultural functionality, to filter time-sensitive pop cultural uses of branded colors out of trademark infringement at specific moments in time, so all brands can compete for consumers’ attention because of the importance of these pop culture moments on the market.

* Visiting Scholar, Chicago-Kent College of Law. This work has benefited from visits to the Valentino Archive in Rome and conversations with Avv. Beatrice Grifoni, the former Intellectual Property Manager at Valentino. I thank Valentino, especially Violante Valdettaro, for sharing archival information with me. Please note that this project is not endorsed or affiliated with Valentino as a brand, but is a separate, independent academic work. My research has also benefited from an academic conversation with Jonathan Anschell, Executive Vice President and Chief Legal Officer at Mattel. Thanks to Mark McKenna for facilitating that interview. Please note that this project is also not endorsed or affiliated with Mattel as a brand. Special thanks to the IP faculty at Chicago-Kent who provided helpful comments on this Article, especially Sarah Fackrell, Graeme Dinwoodie, Jordi Goodman, Greg Reilly, Paul Rogerson, and Cathay Smith, and to others who have commented and provided helpful perspectives at many conferences and workshops, including the Works in Progress in Intellectual Property Conference at Santa Clara Law School, the Junior Scholars Conference at Northeastern Law School, the SEALS Conference, the NYU/Penn/Harvard Trademark Scholars Roundtable, especially Barton Beebe, Bruce Boyden, Irene Calboli, Jeanne Fromer, Christine Haight-Farley, Laura Heymann, Sonia Katyal, Ed Lee, Barbara Lauriat, Jake Linford, Dustin Marlan, Sari Mazzurco, Mark McKenna, Lucas Osborn, Alexandra Roberts, Jennifer Rothman, Jeremy Scheff, Jessica Silbey, David Simon, Chris Sprigman, Joel Steckl, and Rebecca Tushnet. Deep thanks also go to the editors, especially Alexis Berg and Samara Rahman, of the American University Law Review for their suggestions. Any errors are my own. The Author may be reached at feliciacaponigri@gmail.com. The images referenced in this Article may be accessed at https://drive.google.com/drive/folders/1990_unRlOWW_v67BNVenArXFqFsZCw7O?usp=drive_link.

This Article is dedicated to my brother, Bobby Caponigri, who, through his art and vision as an adult with profound autism, has taught me the importance of seeing and appreciating the beauty and cultural significance of the colors we encounter in our lives.