IP Monday Law Blog 

Some of you may remember when your favorite classic film was first released in color: re-edited, remastered, and modernized for our modern 4K and OLED TVs. Or many of you may not be old enough to have ever watched a movie or television show in black and white at all.

Either way, in trademark law, color is not preferred! Despite how counterintuitive it seems, black and white still rules supreme when it comes to filing design trademark applications, and for good reason.

The Black-and-White Rule

Under long-standing United State Patent and Trademark (USPTO) practice, a design mark filed in black and white with no color claim is treated as covering the same design in all color variations. In practical terms:

A black-and-white design registration protects the structure and stylization of the logo itself, regardless of the specific colors used in commerce.

This is not a stylistic preference; it is a scope-of-rights decision. And from a trademark law perspective, black and white is almost always the stronger filing.

Why Black and White Is the Default

Trademark practitioners default to black and white for a simple reason: it provides the broadest possible protection. Filing without a color claim:

• Maximizes the legal scope of the mark
• Preserves flexibility as branding evolves
• Avoids locking the registration to a single aesthetic version
• Creates a stronger long-term enforcement asset

In other words, black and white protects the design itself, not just how it happens to look today. That is why, doctrinally, black and white is not just common practice, it is the preferred medium for design marks.

When a Color Claim Makes Sense

Color claims exist for a number of reasons, but they are exceptions to the rule, not alternatives to it. Here are three legitimate reasons to file a design mark with a color claim.

1. When Color Is Integral to the Logo Design

Sometimes, color is not merely decorative, it is part of the logo’s actual visual structure and distinctive for brand identity. In other words, the color of the design provides value! This can include:

• Color is a strong distinctive element
• Words are rendered in multiple colors
• Designs where color placement defines the geometry
• Logos where contrast or segmentation depends on color

In these cases, the brand may reasonably decide that the color scheme itself is part of the mark being claimed, not just an optional styling choice.

2. To Build and Layer a Trademark Portfolio

Another reason to file with a color claim is portfolio strategy. Many sophisticated brand owners hold:

• A black-and-white design registration (broad coverage), and
• One or more color versions of the same logo (narrow, but specific)

This creates layered protection:

• The black-and-white mark covers the design in all colors
• The color version secures rights in a specific branded presentation

Here, color claims function as supplemental coverage, not primary protection.

3. When Color Adds Distinctiveness to the Words and the Design Together

A third reason to file with a color claim is when color contributes meaningfully to the distinctiveness of the mark as a whole, including both the wording and the design. This often arises when:

• The field is crowded with similar logos or visual motifs, or
• The wording is weak, descriptive, or highly suggestive, and the overall visual presentation is carrying much of the source-identifying function.

In those situations, the specific color scheme may be part of what makes the combined words-and-design mark distinctive, rather than merely ornamental.

Here, a color claim can help define the mark more precisely and reflect the reality that the brand’s distinctiveness lies in the integrated effect of the words, the design, and the color presentation.

This is not about narrowing rights for their own sake, it is about accurately capturing where the distinctiveness of the mark actually resides.

The Real Rule of Thumb

From a trademark law standpoint, the hierarchy is simple:

• Black and white is the default.
• Color is optional and secondary.
• Color should be used strategically.

Or to put it more bluntly:

• You file in black and white to protect the mark, if you can.
• You file in color when you need it or to refine or expand the portfolio.

The Irony of it All

Clients sometimes want to file in color because “that’s how our logo looks.” Trademark lawyers will often recommend black and white because they are focused on long-term scope and flexibility.

Which is why, in a world of high-definition branding and endless visual variation...greyscale still wins in trademark law.

If you’re building a brand and want to make sure your marks are scoped as broadly as they should be, and layered strategically where it actually adds value, it’s worth doing a quick strategy check before filing or refiling. Contact IP attorney Mike Murshak if you have concerns about your trademark.