A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M’s permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M’s trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

(A) Unknown (unmarked yellow-colored removable adhesive note);

(B) 3M’s Post-it brand "Pop-up Notes" (packaging states: The color "Canary Yellow" is a trademark of 3M);

(C) Target’s Work.org brand "self-stick removable notes" (no reference to color or trademark);

(D) 3M’s Post-it brand "Recycled Notes" (packaging makes no reference to canary yellow color or trademarks);

(E) Highland brand "Self-Stick Removable Notes" (packaging refers to Highland as being a trademark of "Minnesota Mining and Manufacturing" — no reference to 3M, and no reference to "canary yellow" or color trademarks); and

(F) Office Max’s "Self-stick Pop-up Notes" (no reference to color or trademark).

All of this raises a few more questions worth asking:

(1) Since (B) and (D) appear to both be 3M’s Canary Yellow, why doesn’t 3M mention the trademarked color on packaging for its Recycled Notes? Are the Recylced Notes not Canary Yellow?

(2) Since (A), (C), and (F) closely resemble the yellow shade of 3M’s Highland brand (E), does that mean 3M views the Highland color and these others to fall outside the legal scope of protection for the Canary Yellow trademark?

(3) Where should a court draw the line in comparing color shades for purposes of determining likelihood of confusion? How should this be measured, by wavelength, colorimeter device, Pantone matching system? Doesn’t a note’s clear cellophane wrapper affect one’s visual perception of color? What about in-store lighting differences, won’t they affect one’s visual perception too? How about when outside on billboard advertising, could infringement depend on the daily weather? Sunny days infringing, cloudy days non-infringing? Lastly, what about on-line uses of color? I found that I perceived the above collage of six different color squares differently depending on which computer and monitor I viewed them from.

Has any of this changed your view one way or the other about whether Accountemps needs 3M’s permission to run the billboard ad?

  • Anonymous

    “For purposes of this motion, then, the court will assume that canary yellow is a relatively narrow band of color falling somewhere between the HIGHLAND light canary yellow and the darkest and brightest shades of competitively viable yellow. Before trial, however, the court expects the parties to arrive at a more specific definition of ‘canary yellow.'”
    Minnesota Mining and Manufacturing Co. v. Beautone Specialties, Co., Ltd. 82 F.Supp.2d 997, 1000 (D.Minn. 2000)
    “Rollit states that the witness did not testify as to the background of the Highland brand; specifically, he did not speak to 3M’s decision to lighten the shade of yellow. *Because the decision to lighten the color was the result of a settlement,* defense counsel’s questions in this area triggered privilege objections. However, the parties determined at the hearing on this motion that Defendant actually wants to know the color specifications of ‘Highland yellow’ before it was lightened. (More specifically, Rollit is trying to compare the old ‘Highland yellow’ to Canary Yellow.) Such inquiry is not objectionable; therefore, this part of the motion is GRANTED.
    Finally under topic 32, Defendant seeks further deposition into the ‘Highland yellow’ color specifications. The witness testified that 3M does not use a pantone or L, A, B range specification, but rather uses color swatches for a visual match up. Even if this is the case, the court thinks it is likely that Plaintiff could prepare a witness to discuss either the pantone range or the L, A, B values for the Highland color (for the current ‘Highland yellow,’ as well as the pre-lightened version). As such, Rollit’s motion with respect to further inquiry into Highland color specifications is GRANTED.”
    3M Co. v. Kanbar 2007 WL 2972921, 4 (N.D.Cal.v2007)

  • James Mahoney

    Wow. And I thought trying to come up with a snappy headline was a suspect use of time.
    For what it’s worth, I wouldn’t worry at all about using a sticky note–any old sticky note–as a vehicle in an ad. To my (non-legal) mind, that would fall into the category of silliness because you’d start to worry if you had to get permission from a candy manufacturer, telephone manufacturer, clothing manufacturer, etc., if any of their products were used as props or whatever in an ad or photo.
    The point in my mind is whether the item is incidental or whether you’re trying to borrow validity or prestige. Even at that, I can think of advertising that was heavily based on borrowed prestige, and I’ll bet they didn’t seek permission to use the icon (“Pardon me, but do you have any Grey Poupon?” Name the borrowed icon.)
    This canary seems like a canard.