Color as a Trademark – A Discussion of the CAFC’s Decision in In re Forney Industries, Inc.

 Susan Dierenfeldt-Troy, Esq.

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

A color mark is one where one or more colors are used to perform the trademark function of identifying the source of the good or service.  These marks may be registered as a trademark on the Principal Register under U.S. law if: 1) at the time the color mark is applied for, it is intrinsically distinctive or has become inherently distinctive in the minds of consumers as being associated with the supplier.  If not, the color mark may be registered on the Supplemental Register (which provides some limited benefits to the registrant) providing it meets the other requirements for registration.  If the color mark is later shown to have acquired secondary meaning, it then may be eligible for registration on the Principal Register.  This blog provides background information on color trademark law and discusses the April 8, 2020 decision of the Federal Circuit Court of Appeals in In re Forney Industries, Inc.

Quick Take-Home Points

Color marks may be registrable either on the Principal Register or the Supplemental Register.  Generally, color marks associated with packaging stand a much greater chance of being approved for registration relative to color marks associated with goods themselves for reasons discussed below providing the “package” color mark meets the many other requirements of trademark registration (e.g., the color serves no function and color is clearly a unique indicator of the source of the goods or services in consumers’ minds).  Three well-known color marks are UPS’s brown mark as applied to its delivery trucks, Tiffany’s egg shell blue mark as applied to its packaging, and John Deere’s green and yellow mark as applied to its various farm and industrial equipment.  Nevertheless, registration of color marks is no easy task as this blog demonstrates.

 Detailed Discussion

Color marks have been deemed by the courts as akin to trade dress.  Trade dress is the commercial look and feel of a product or service that identifies and distinguishes the source of the product or service.  It includes the various elements (such as the design and shape of materials) used to package a product or services.  For example, the Coca Cola Company has a registered trademark for the shape of its glass bottle.

Under 15 U.S.C. 1052 of the Lanham Act, applicants may file for trademark registration of merely descriptive marks which may not otherwise qualify for trademark protection by providing evidence that consumers have come to identify the mark with the applicant.  Trade dress that is not inherently distinctive to start with or has not acquired distinctiveness under §2(f) of the Lanham Act will be refused registration on the Principal Register.  For color marks, whether or not a color “trade dress” mark can be registered on the Principal Register is also largely dependent upon whether the mark involves a product design or packaging both of which may be viewed as a type of trade dress as will be discussed below.

Demonstrating that an applied-for color mark is or has become inherently distinctive to the satisfaction of the United States Patent & Trademark Office is a tough burden to meet as General Mills found out in a 2017 appeal to the Trademark Trial & Appeal Board (“Board”) when it tried to register the color yellow for its Cheerios’ brand boxes.  Even though the yellow box was a “package” trade dress, the Board found that the color yellow was in such common use for other cereal brands, that General Mills claim of acquired distinctiveness under 2(f) lacked merit.

According to the Supreme Court, a mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-216, 54 USPQ2d 1065, 1069-70 (2000).  Features of a product’s design can never be inherently distinctive and are registrable only upon a showing of secondary meaning. Id. at 213–14, 54 USPQ2d at 1069.  The commentator notes that the Court’s rationale is consistent with the purpose of trademark law:  to allow the consumer to readily identify the source (e.g., the manufacturer) of the goods/services being sold under the mark.  Indeed the Wal-Mart court noted that product design almost invariably serves purposes other than source identification, and that “[c]onsumers are aware . . . that, almost invariably, even the most unusual of product designs — such as a cocktail shaker shaped like a penguin — is intended not to identify the source, but to render the product itself more useful or appealing.” Wal-Mart at 213-2014.

In contrast to product design trade dress, trade dress constituting product packaging may be inherently distinctive for goods or services and registrable on the Principal Register even without a showing of acquired distinctiveness.  “[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source.’” Id. at 210 (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)).

This brings to the discussion of the April 8, 2020 decision on the registration of a color mark where the Federal Circuit Court of Appeals (“CAFC”) reversed the Board’s decision against registration of a package color In re Forney Industries, Inc., Appeal No. 20191-1073.  This precedential decision is noteworthy because it distinguishes instances when an arrangement or blending of colors into a distinctive scheme for packaging may qualify for protection as already having intrinsic distinctiveness without a showing of acquired distinctiveness under §2f.  Forney’s trademark application was not made under 2(f) but under 1(a) of the Lanham Act, the usual route for applicants who believe their mark is beyond being merely descriptive.

In Forney, the applicant sought to register a mark comprising the colors “red into yellow with a black banner located near the top as applied to packaging” for metal hardware, welding equipment, safety goods and marking products. The Board had relied on the High Court’s decision in Wal-Mart Stores in concluding that this color combination was not registrable because the applicant could not establish inherent distinctiveness.

The CAFC took a different approach and found that the Board, by relying on Wal-Mart Stores had “erred in two ways: (1) by concluding that a color-based trade dress mark can never be inherently distinctive without first differentiating between product design and product packaging color marks; and (2) that product packaging marks that employ color cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border.”  In other words, the CAFC concluded that under either scenario, the Board’s logic was faulty.

With regard to the first point, the CAFC disagreed that the Supreme Court had made it clear that color, when on a product or its packaging, can never be inherently distinctive without establishing inherent distinctiveness. The CAFC observed that the Supreme Court has not gone that far because it has not so ruled as to product packaging. The CAFC then held that “color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.”  The CAFC reasoned that, although “color is usually perceived as ornamentation,” In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), “a distinct color-based product packaging can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.”

The CAFC also took a different tact from the Board by applying the Supreme Court’s precedent in trade dress case law to Forney’s package mark.  In the seminal case of Two Pesos, the Supreme Court assumed that the trade dress related to the interior décor of a Mexican restaurant was inherently distinctive.  Accordingly, Two Pesos stands for the proposition that trade dress can be inherently distinctive. [Emphasis by CAFC].

In Wal-Mart, the Supreme Court, in discussing a product design mark, stated that, “with respect to at least one category of mark—colors—we have held that no mark can never be inherently distinctive.” 529 U.S. at 211–212.  As the CAFC emphasized in Forney, product design and product packaging involve different trademark considerations.   In Wal-Mart, the Supreme Court “considered the fact that ‘product design almost invariably serves purposes other than source identification.'” Id. at 213. As to product packaging, however, the Court noted, “[t]he attribution of inherent distinctiveness to certain categories of . . . product packaging derives from the fact that the very purpose of . . . encasing [a product] in a distinctive packaging, is most often to identify the source of the product.”   The commentator emphasizes that trademark law is indeed focused on ensuring that a consumer will know the true source of purchased goods and services and distinct packaging can be a factor in building “memory muscle.”

Turning then to Forney’s proposed mark, the CAFC opined that multi-color packaging is “more akin to the mark at issue in Two Pesos than those Wal-Mart.” As such, Forney’s unique color combination falls firmly within the category of marks the Court described as potential source identifiers.  The CAFC’s opinion is instructive because it demonstrates that precedent can be interpreted as much for what it does state as for what it does not state. In Forney, the CAFC concluded that the Supreme Court’s Qualitex and Wal-Mart decisions when combined with its Two Pesos decision demonstrate that a color mark when used for packaging (i.e. as trade dress) can be inherently distinctive.  See also Wal-Mart (stating “[a] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify a particular source.’” (Wal-Mart at 210 citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).

In considering the Board’s alternative conclusion, the CAFC found that the Board’s decision had again not comported with prior CAFC case law. “Without explaining why it was doing so, the Board found that a color may only be inherently distinctive when used in conjunction with a distinctive peripheral shape or border.”  In other words, the Board had made a conclusory argument without providing evidence to back up its assertions.             The Board agreed with Forney that the proposed mark “is not just a ‘color mark’ but also a ‘symbol.’ ”  A public policy consideration in granting color marks is whether the registered mark would preempt use of a color that is commonly used in a particular field of commerce.  According to the CAFC, Forney was not attempting to preempt the use of any particular color, but only to protect the particular colors arranged in a particular design.  According to the CAFC, the question for the Board is whether the proposed mark is “sufficiently indicative of the source of the goods contained in that packaging.” That assessment must be made “based on the overall impression created by both the colors employed and the pattern created by those colors.”

The CAFC further criticized the Board for its failure to determine inherent distinctiveness using the Seabrook factors.  These factors are referenced in the TMEP which states: “The test for determining inherent distinctiveness set forth in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977), although not applicable to product design trade dress, is still viable in the examination of product packaging trade dress. The examining attorney should consider the following Seabrook factors – whether the proposed mark is:

  • (1) a “common” basic shape or design;
  • (2) unique or unusual in a particular field;
  • (3) a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or
  • (4) capable of creating a commercial impression distinct from the accompanying words.”

Not surprisingly after its detailed analysis, the CAFC vacated and remanded the case to the Board to determine if Forney’s proposed mark is inherently distinctive under the Seabrook factors and therefore entitled to registration on the Principal Register.


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