Precedential No. 4: TTAB Finds Pastel Colors For Disposable Pipette Tips Both Nondistinctive And Functional

• Published date: 27 January 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

Color this applicant blue after the USPTO nixed its five applications to register various pastel colors (blue, green, orange, purple, and yellow) for "disposable pipette tips fitted with a customizable mounting shaft," finding that the proposed marks are not inherently distinctive, lack acquired distintinctiveness under Section 2(f), and are functional under Section 2(e)(5). Although Applicant Integra's products have been commercially successful, it failed to prove that relevant consumers perceive the "Pastel Tints" as trademarks. Furthermore, the Pastel Tints are essential to the use of Integra's goods, and therefore de jure functional, because they ensure that customers use the right tip with the right pipette. In re Integra Biosciences Corp., Serial Nos. 87484450, 87484519, 87484584, 87484617, and 87484658 (January 24, 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Applicant Integra Biosciences has been selling its disposable pipettes in pastel colored rack inserts since 2007. It explained that each color is used as part of a "color-coding scheme" to coordinate pipettes and pipette tips to make sure that customers use the appropriate tip on a specific pipette. Each color represents a different size of pipette fitting.

Product or Packaging?: The Board first quickly addressed the question of whether Integra's color marks are applied to the product or to the packaging, since "color can sometime be inherently distinctive on product packaging, but it can never be inherently distinctive on a product itself." See, e.g., In re Forney Indus., 955 F.3d 940, 2020 USPQ2d 10310, at *3-5 (Fed. Cir. 2020). There was no dispute that Integra applies the purported marks to product packaging, i.e., rack inserts. The application drawings and the specimens of use "clearly depict the Pastel Tints applied to the packaging inserts." as described in the applications.

Inherently Distinctive? Although "color is usually perceived as ornamentation," color on product packaging may be "inherently distinctive if '[its] intrinsic nature served to identify a particular source.'" Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992)). The issue is whether the trade dress "'makes such an impression on consumers that they will assume' the trade dress is associated with a particular source." Forney Indus., 2020 USPQ2d 10310, at *6 (citing Seabrook Foods, Inc. v....