Color claims for trademarks should in general be avoided. To be clear, there are situations when claiming color on a trademark registration application makes sense, but these situations are not common. What's more, color claims might create issues in the future, if you stop using your trademark exactly as registered.
将某种颜色或多种颜色作为商标特征进行主张
在注册商标时，品牌方可选择将特定颜色作为商标的组成要素。若主张颜色要素，则需在商标注册申请中提交彩色图像——至少在中国和美国是如此。例如，星巴克公司在美国注册的下图商标就主张了绿色、黑色和白色三种颜色：
品牌方也可选择不主张颜色。此类情况下，必须提供灰度图像。下图商标即为星巴克注册的未主张颜色的商标示例：
When a color claim is not made, trademark protection extends to the trademark irrespective of the color scheme on it. In other words, the registration for the trademark immediately above protects Starbucks' exclusive right to use the mark not just in black and white, but also in green, black, and white, or pink, purple, and yellow, and so on. By contrast, the mark registered in color only protects Starbucks' exclusive right to use the green, black, and white version.
对于星巴克这类全球性品牌而言，这种区分往往只是理论上的，因为它们通常会同时注册带颜色声明和不带颜色声明的商标，从而获得最广泛的保护范围。然而对中小企业来说，预算限制可能使其难以注册多种版本的商标，尤其当它们还需注册其他标识时——例如英文名、中文名、口号或产品名称。
To be clear, registering a trademark with a color claim does not mean that other parties can do whatever they want with the mark as long as they change the color scheme. Sticking to the example at hand, if I open a coffee shop and place a red, orange, and yellow version of the Starbucks logo outside, it is almost certain that USPTO would not register "my" garish trademark, and that Starbucks would win a trademark infringement action against me.
What's the issue with color claims then? Consider the following scenario, based on a situation one of our clients recently encountered.
假设您在美国注册商标时声明了红黑双色标识，随后通过马德里体系将该保护延伸至中国。随着时间推移，您弃用了红黑标识，转而采用更简洁的纯黑色版本。当需要为美国商标提交五年使用声明时，您提供的样本展示的是黑色标识。
In this situation, USPTO will consider, on a case-by-case basis, whether there has been a "material alteration" of the trademark. If in this case USPTO determines that there has indeed been a material alteration, it will reject the Declaration of Use, in turn leading to cancellation of the mark. Making things worse, because you used the Madrid System to obtain trademark protection in China, that protection depends on the original U.S. trademark registration for five years. A cancellation of the U.S. trademark registration would lead to the cancellation of the international registration upon which the extension to China depends. This would require you to "transform" the China trademark protections into a regular China trademark registration, leading to added costs and hassles.
您在中国商标注册的第三方
Another possible hiccup involves a challenge by a third party of your China trademark registration. Imagine that you register a trademark in China (applying directly to the China National Intellectual Property Administration (CNIPA), not via the Madrid System), claiming the color blue. However, as you roll out your brand in China, your marketing team convinces you to use red instead, suggesting that color will resonate more with Chinese consumers. A few years later, a competitor files a cancellation action against your trademark, on the basis of non-use. You respond by submitting ample evidence of your use of the mark in red. CNIPA might accept that as evidence of use ... but it might not.
As you can see, failure to continue using a trademark registered in color, in the exact form in which it was registered, can imperil your trademark rights. In the two scenarios above, the ultimate outcome might not be fatal, depending on the circumstances, but in both cases — likely unnecessary — color claims have the potential to lead to problems. What's more, as China contemplates requiring certifications of use for registered trademarks every five years (see China Trademarks: Use It or Lose It for more information), the potential for color claim-related troubles is bound to grow.
