A New Standard for Multicolored MarksAugust 10, 2020

Whether it is a light blue jewelry box, or a red sole on a high-heel shoe, certain colors allow consumers to immediately associate that color with a specific brand or product. However, whether a color can be trademarked is not simply black and white. As demonstrated by a long and complex history of case law involving color marks, while words are not the only feature that can be protected under the Lanham Act, historically, colors could only be trademarked under certain circumstances.

Trademarks are defined by the Lanham Act as “any word, name, symbol, or device, or any combination thereof” that is used to identify and distinguish one’s goods or services from those of other sources. The degree of protection varies depending on the distinctiveness of the mark. A mark that is “distinctive” can identify a single source of particular goods or services. However, when applying these legal concepts to colors, it is important to consider whether the colors serve as a source identification function and not merely a decorative or utilitarian purpose.

For a color mark to be trademarked in connection to a particular good or service, proof of “acquired distinctiveness” (or secondary meaning) was required, meaning that through use of the mark over time, a significant number of consumers developed an association of the color—when used in connection with the goods/services—with a single source. The rationale behind requiring acquired distinctiveness for color marks stems from the possibility that a color, like a descriptive word mark, could eventually come to indicate a product’s origin, and therefore may become protectable.

However, earlier this year, the U.S. Court of Appeals for the Federal Circuit recently held that, “color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.” In re Forney Indus., Inc., No. 2019-1073 (Fed. Cir. April 8, 2020)(emphasis added). In other words, if the mark is inherently distinctive, a showing of secondary meaning is not required.

The registration at issue featured a solid black stripe above a yellow to red gradient mark, described as being applied to product packaging for Forney Industries, Inc. (Forney). Forney sought to register this mark without showing acquired distinctiveness/secondary meaning. Relying on Supreme Court precedent, the Trademark Trial and Appeal Board (TTAB) cited to decisions in Wal-Mart Stores, Inc. v. Samara Bros. and Qualitex Co. v. Jacobson Prod. Co., arguing that the cases “make 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.” Nonetheless, the Federal Circuit concluded the TTAB erred by holding that a color-based trade dress mark can never be inherently distinctive without differentiating between product design and product packaging marks. Rather, a distinct-color based product packaging mark can be inherently distinctive.

Based on the recent opinion by the Federal Circuit, a color mark may be inherently distinctive—when used on product packaging—if the combination of colors and the design created are sufficiently indicative of the source of goods contained in that packaging. While this decision removes an obstacle for trademark owners in obtaining registrations on multicolored marks, the Seabrook factors must still be weighed in determining the inherent distinctiveness of a mark, and the overall impression created by both the colors employed and pattern created will be considered prior to allowing registration.

Tina G. Yin-Sowatzke, Pharm.D. is an Associate Attorney in the MVS Biotechnology & Chemical Practice Group. To learn more, visit our MVS website, or contact Tina directly via email.

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