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Color Can’t Be A Trademark… Can It?

May 18, 2020 | Intellectual Property

Think about your favorite consumer product. Does a specific image come to mind? A specific word mark? Maybe a distinctive product design? Color is probably one of the last things you think of. However, color can certainly serve as a trademark (defined as a source identifier that is generally thought of as a word, name, symbol, etc. but can be much more broad than that). Think about Tiffany blue, T-Mobile’s magenta, or Louis Vuitton’s red-bottomed shoes. So color certainly can function as a trademark. However, what about colors used on consumer packaging?

The Federal Circuit just considered this question and allowed Forney, a manufacturer of welding and machining tools and accessories, to continue its pursuit for a U.S. trademark registration for its distinct red, yellow, and black labels. On initial review, the Examining Attorney assigned to Forney’s underlying U.S. trademark application rejected the application based on the proposed mark lacking inherent distinctiveness. On Ex Parte (one party) Appeal, the Trademark Trial and Appeal Board (the “Board”) affirmed the refusal, and held that color marks applied to product design or product packaging can never be inherently distinctive. Thus, the Board ruled that registration of color marks is allowed only upon a showing of acquired distinctiveness, i.e. a showing that consumers associate the color mark with the source of the product.

The Federal Circuit considered the possibility that consumers would indeed associate a color mark with a source because the color mark makes such an impression that consumers would immediately make the goods-source connection. Therefore, the Federal Circuit remanded the case to the Board to consider the Seabrook factors, which ask 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.

Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977).

Forney’s color mark may indeed be registered if the Board finds the mark meets the above test. Only time (and a decision from the Board) will tell.