April 10, 2020
On April 8, the Federal Circuit issued a new decision that clarifies the protection of color marks. The case, In re Forney Industries, Inc., was an appeal of a Trademark Trial and Appeal Board (TTAB) decision that affirmed a refusal of registration.
Forney had sought registration of a color trademark (see below) described as a “solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.” The packaging is used by Forney for a variety of welding and machining goods.
During the examination, registration was refused because the mark “is not inherently distinctive”; the initial refusal of the USPTO found that product packaging of trade dress can only be registered on the Principal Register with proof of secondary meaning or on the Supplemental Register. The TTAB affirmed the refusal, finding that color marks cannot be inherently distinctive and that, further, this standard applies to marks consisting of a single color or multiple colors.
In considering this appeal, the Federal Circuit reviewed decisions from the U.S. Supreme Court involving the protection of trade dress and used their guidance to hold the TTAB had erred in finding that color marks could never be inherently distinctive. Specifically, the Federal Circuit held that color marks as applied to product packaging can be inherently distinctive under the prior Supreme Court precedent. In that holding, the court distinguished between color marks used for the product itself versus color marks used for the packaging of the product.
To clarify, the court pointed out that the Supreme Court specifically held in Two Pesos v. Taco Cabana that trade dress can be inherently distinctive. In reviewing the Supreme Court guidance in Qualitex Co. v. Jacobson Prod. Co., the Federal Circuit recognized that color alone can be protectable. And, they noted that in Wal-Mart Stores, Inc. v. Samara Bros., the Supreme Court distinguished between the protection of trade dress in the product design as compared to the product packaging. Following guidance from these decisions, the Federal Circuit concluded that it was an error for the TTAB to find that product packaging consisting of multiple colors is not capable of being inherently distinctive.
The Federal Circuit separately found that it is not required for protection that a color mark be associated with a specific peripheral shape or border. The relevant question to be answered is whether the trade dress makes an impression on consumers that the trade dress is associated with a particular source. In order to assess that question, the court finds that one must look to the following factors established under Seabrook Foods, Inc. v. Bar-Well Foods, Ltd.: “(1) Whether the trade dress is a “common” basic shape or design; (2) whether it is unique or unusual in the particular field; (3) whether it is a mere refinement of a commonly-adopted and well-known for of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or, inapplicable here, (4) whether it is capable of creating a commercial impression distinct from the accompanying words.”
The court found that evidence of each of these factors is relevant to answer the question of whether or not the trade dress creates a source of origin impression on consumers.
Because this particular case involved a combination of colors arranged in a particular design, the court determined the TTAB should assess whether the overall impression of that combination in the specific design creates an indication of source by the consumer. As a result, the prior decision of the TTAB was vacated and remanded to determine whether the mark at issue is inherently distinctive under this guidance.
If you have questions regarding this decision, please contact Joseph T. Nabor, author of this alert.
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