TTAB: Black Color Mark For Flower Boxes Won’t Fly

In a decision combining the hot trademark topics of color marks and aesthetic functionality, the Trademark Trial and Appeal Board (TTAB or Board) upheld an examiner's refusal of registration for a single-color mark (black) for boxes for "flowers and live cut floral arrangements." In re Florists' Transworld Delivery, Inc., Serial No. 77590475 (T.T.A.B. Mar. 28, 2013) (precedential).

Florists' Transworld Delivery, Inc. filed an intent-to-use application to register the mark on October 10, 2008. The applicant subsequently filed an amendment to claim first use as of December 8, 2008, and to claim that the color had acquired distinctiveness as a result of its extensive use and promotion. The examiner refused registration on two bases: (1) that the mark was merely ornamental and would not be perceived as a trademark and (2) that the applicant had not proven acquired distinctiveness.

As to the first basis, the examiner argued that the mark served both a utilitarian and an aesthetic function when used for floral packaging. The examiner refused registration on the ground of aesthetic functionality, finding that "black, in the context of floral arrangements, is associated with stylish or formal events such as weddings, providing an 'elegant,' 'classical' or 'luxurious' look, and in other contexts may connote grief or condolence, and is a critical color in connection with Halloween displays; and there is a strong competitive need for the color black in order to permit the appropriate or desired message to be sent by the consumer to a recipient of flowers." The TTAB treated the examiner's comments as conceding that the color mark was not in fact functional in a utilitarian way.

The TTAB noted that the applicable test for aesthetic functionality was "whether registration of a particular feature hinders competition and not...whether the feature contributes to the product's commercial success" (quoting M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 U.S.P.Q.2d 1086, 1097 (T.T.A.B. 2001)). It then analyzed whether the applied-for color served a "non-trademark purpose that would hinder the ability of others to effectively compete with the registrant." The Board found that (1) color has significance in the floral industry, such as the use of red for Valentine's Day; (2) black "communicates elegance or luxury," it "has significance on somber occasions such as in the context of death" and it is "a traditional Halloween color"; and (3) competitors who wish to offer...