December 10, 2018

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Shades of Gray: Color Marks Can Never Be Inherently Distinctive

In a precedential Trademark Trial and Appeal board (TTAB) decision, the Board held that an applied-for trademark consisting of multiple colors on product packaging, without any distinct shape, pattern or design, can never be inherently distinctive. See In re Forney Industries, Inc., Serial No. 86269096 (September 10, 2018). Applicant Forney Industries, Inc. sought to register a color scheme on the Principal Register, consisting of a black banner above a yellow to red color gradient for use on the product packaging of its various metal hardware and other small welding tools.

Color Gradient Not Inherently Distinctive

The Trademark Examining Attorney refused registration of the mark for lack of inherent distinctiveness under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127. Inherently distinctive marks range in degree of strength, but in all cases enable consumers to differentiate one source’s good or service from another. The spectrum of inherently distinctive marks ranges from carrying no meaning other than identifying the source of the good or service to alluding to, but not explicitly describing, an aspect of the good or service it is used in connection with.

Not only did the Trademark Examining Attorney refuse this color scheme on the basis of lack of acquired distinctiveness—the examining attorney went on to conclude that a color scheme mark like this could never be inherently distinctive. The TTAB affirmed, finding that color marks consisting of multiple colors applied to product packaging – as opposed to products – are not capable of being inherently distinctive.

Applicant first disputed the classification of its applied-for mark as a “color mark” choosing instead to characterize it as a “distinctive design and layout of colors on its packaging that functions as a ‘symbol.’” The TTAB, however, found it to be a color mark because the application did not designate a specific shape, pattern, or design to the mark and it appeared in various shapes and shading on applicant’s product packaging.

Applicant asserted that the color layout was akin to the color marks that received registration in previous cases. The TTAB treated the applied-for mark as a “packing backer card” and found that no prior precedent established that a color scheme on a packing backer card—without any distinctive shape or shading—could be inherently distinctive. It distinguished the matter from Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, and In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, where the courts did grant trademark protection to color marks, for two reasons. The colors at issue in Qualitex and Owens-Corning were applied to the actual product, not the product packaging, and they involved marks consisting of a single color. The TTAB contemplated whether color marks of multiple colors on product packaging could escape the prior rule that color marks could never be inherently distinctive and found that they could not.

Notably, the Board also distinguished the matter from In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, where the TTAB held that a color applied to a product or its packaging could suffice as a trademark, but it could never be inherently distinctive as a source indicator. They did so on the basis that Forney Industry’s applied-for mark was a color mark, not a product packaging trade dress mark. Finally, the TTAB agreed with the examining attorney’s holding that “the use of color in product packaging can be inherently distinctive . . . only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design.” And because here, applicant sought registration when there was no such consistent shape, pattern, or discerning design accompanying its mark, the applicant could not establish an inherently distinctive trade dress.

While certain types of product packaging may be inherently distinctive source indicators, a color mark, that is, a mark consisting of color alone — whether applied to a product or its packaging — is not among them. Precedent makes clear that a particular color on a product or its packaging can never be inherently distinctive and may only be registered on a showing of acquired distinctiveness. Here, Applicant did not bring a Section 2(f) acquired distinctiveness claim, and therefore, was refused registration. Although product packaging, unlike product design and shape, is capable of being inherently distinctive and registrable on the Principal Register without a showing of acquired distinctiveness, this principle did not apply to the analysis of Applicant’s mark, which is a color mark, not a product packaging trade dress mark.

The use of color in product packaging can be inherently distinctive (so that it is unnecessary to show secondary meaning) only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design. A color scheme or palette, in and of itself, cannot be inherently distinctive. Thus, even though a color mark consisting of colors applied to product packaging cannot be inherently distinctive, it may only be registered on the Principal Register upon adequate proof of acquired distinctiveness.

For established businesses, this means that a color scheme on product packaging can be registered by showing that the color combination has acquired distinctiveness over time in that consumers have come to associate the colors with that particular company’s products or services. For newer businesses that do not yet have the track record to show acquired distinctiveness, they should only apply for registration if their color scheme has a uniform size, shape, or other distinct aspect on the product packing.

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About this Author

Gene Markin, Stark and Stark, Construction Litigation Lawyer, New Jersey
Shareholder

Gene Markin is an Associate in Stark & Stark’s Construction Litigation Group where he concentrates his practice on complex construction litigation involving community associations, developers, sponsors, design professionals, engineers, and contractors.  He has represented numerous condominium associations in construction defect cases involving faulty workmanship and negligent installation of exterior claddings, EIFS (exterior insulation finish system), stucco, brick, stone, masonry, cultured masonry, balconies and decks, windows and doors, Duradek, Azek Trim, EPDM...

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