It's Time To Get Colorful: Federal Circuit Holds That Some Color Marks Can Be Inherently Distinctive

• Published date: 29 June 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Mintz
• Author: Ms Susan Neuberger Weller and Harold S. Laidlaw

The Federal Circuit recently held in a precedential ruling that a "color mark" comprising a multiple-color pattern is capable of being inherently distinctive and of registration on the Principal Register, so long as it appears on product packaging rather than on a product itself.

In In re Forney Industries, No. 2019-1073, applicant Forney sought registration on the Principal Register for a mark comprising a pattern of colors on product packaging and labels'a black band above a gradient of yellow shading into red.

The examining attorney rejected the proposed mark and the TTAB affirmed the rejection, stating that Supreme Court precedent dictated that color marks were incapable of possessing inherent distinctiveness and thus were eligible for initial registration only on the Supplemental Register, with later registration on the Principal Register contingent upon a showing of acquired distinctiveness. The Board also offered, as an alternative ground of rejection, the fact that there was no peripheral shape or border delimiting the appearance of Forney's gradient on packaging - the pattern alone had been applied for.

On appeal from the TTAB, the Federal Circuit criticized the Board's analysis of Supreme Court precedent on trade dress and color marks, including Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995), and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000). The Federal Circuit found that the Board had over-read the decisions to reach the mistaken conclusion that color marks could not be inherently distinctive regardless of their use on products or on packaging.

Specifically, the Federal Circuit observed that while some dicta in Qualitex implied that a color mark would only be registrable if it had acquired secondary meaning, the case "did not expressly so hold." (Slip op. at 9). Conversely, in Two Pesos, the Court had assumed without deciding that restaurant trade dress including a vivid color scheme was inherently distinctive, suggesting that such inherent distinctiveness was cognizable when applied to something other than the sold products themselves. Likewise, while Wal-Mart contained some language suggesting that color marks were per se incapable of inherent distinctiveness, the fuller context of the case drew an important distinction between product design trade dress (which could never be inherently distinctive) and product packaging trade dress (which could be), as...