Color has caused a rift between self-storage REITs U-Haul and Public Storage. On November 12, 2024, U-Haul filed a complaint against Public Storage in the US District Court of Arizona. The action is designed to protect U-Haul’s right to continue its use of the color orange and the word ‘orange’ when promoting and marketing its storage business. This comes after Public Storage allegedly demanded U-Haul discontinue use of the color, according to the complaint.
The complaint states that U-Haul believes Public Storage has “engaged in a multi-faceted and corrupt campaign to wrongfully appropriate rights in the use of the color and word ‘orange’ in connection with self-storage services and to assert such rights against U-Haul, its sister companies, its dealers, and licensees.”
It further states that Public Storage has filed false statements with the US Patent and Trademark Office (USPTO) claiming exclusive use of the color orange and making baseless demands that others, including U-Haul, stop using the color and/or the term 'orange' in connection with their businesses.
“For 79 years, U-Haul has continuously and prominently featured the color orange in connection with its truck, trailer, and towing equipment rentals…,” states the U-Haul claim. “[Public Storage] has now demanded that U-Haul businesses cease use of the color orange on a website operated by U-Haul and cease its use of the term 'orange'... This demand is part of an improper scheme by [Public Storage] to wrongfully assimilate and steal the orange trade dress of U-Haul businesses and third-parties and to monopolize the color orange and term ‘orange’ within the self-storage industry.”
The claim further states that Public Storage is so determined to monopolize the color and/or the term ‘orange’ that it has fabricated use of trademarks containing the word and knowingly filed fraudulent evidence of trademark use with the USPTO.
U-Haul has submitted many examples of its use of the color orange since the company was founded in 1945, including photos of some of its earliest trailers.
The company further shows that it owns the following long-standing federal registrations for trade dress and service marks that incorporate the color orange.
The suit further states that Public Storage only began using the color orange because of U-Haul’s success with it. “Public Storage’s founder Wayne Hughes has admitted that Public Storage originally and intentionally knocked-off the color orange to draw an association with U-Haul as a way to attract customers to Public Storage,” states the complaint. “It is only over the past few years that Public Storage has made a dramatic shift in its branding and promotion of its self-storage services away from prominently using the colors purple and/or yellow together with the color orange…to featuring only the color orange.”
Included in the complaint are images in which Public Storage uses both purple and orange.
Also included in the suit is Public Storage’s previously filed application, which sought to obtain registration for trade dress and service marks that incorporated multiple colors (orange, yellow, and purple), not just orange.
“Despite many years of featuring the color purple in combination with the color orange, and having knowledge of U-Haul’s prominent use of the color orange, [Public Storage] made a distinct shift in its marketing efforts by limiting and then apparently abandoning all use of the color purple to switch to solely featuring the color orange on its self-storage facilities and its marketing materials,” states the complaint, providing examples in which Public Storage has abandoned all other colors except orange, such as on this facility below.
Numerous companies have been able to successfully trademark a color over the years. In 1995, the US Supreme Court case Qualitex Co. v. Jacobson Products Co. established that colors can be trademarked under certain circumstances, meaning a company can legally "own" a specific color (this case was over a shade of green used on dry cleaning pads). Some brands that have claimed a color since then, and won trademark lawsuits over the color, include:
Of course, to successfully trademark a color, a company must prove that the color has gained "secondary meaning" in the minds of consumers, meaning they strongly associate that color with the brand. According to U-Haul’s complaint, the company does not feel that Public Storage has accomplished this.
“This extensive, widespread nationwide use of the color orange in connection with self-storage services, including U-Haul’s longstanding and nationwide use of the color orange in connection with its Self-Moving and Storage Services, demonstrates that the color – when used in connection with such services – does not and cannot function as a source identifier for any one particular self-storage service provider,” states the complaint. “While consumers may, and likely do, associate the color orange with self-storage services, they do not associate the color with a single provider of those services. As such, [Public Storage] cannot plausibly claim the color, or any particular application of the color, has acquired distinctiveness as an indicator of its services. As such, claims that the color orange has acquired distinctiveness for [Public Storage] services are improper and false.”
U-Haul is asking the Court to declare that their use of the color orange and the term ‘orange’ do not violate Public Storage’s alleged rights or constitute trademark infringement, trademark dilution, unfair competition, or a violation of the Anti-cybersquatting Consumer Protection Act.
The claim further asks that the Court invalidate certain Public Storage trademark registrations on the basis of US Patent Office fraud (filing evidence intentionally fabricated in an effort to maintain trademark registrations).
The claim ends by stating the Public Storage is “attempting to pull a fast one on the USPTO by bootstrapping an unsustainable claim of ownership of the color orange, and bullying other long-time users of orange trade dress."
U-Haul's legal team declined to comment when contacted by MSM; Public Storage has yet to respond to our inquiry. We will keep you up to date as this story unfolds.