On April 8, the U.S. Court of Appeals for the Federal Circuit issued a trademark decision holding that a multi-color pattern on product packaging can be inherently distinctive and that this inherent distinctiveness does not require a “peripheral shape or border” around the multi-colored pattern.

Color can be the basis of a trademark

We have written before about circumstances in which color alone has been protected as a trademark in connection with a specific industry or particular product (or its packaging) or service. Think UPS brown or 3M canary yellow Post-It notes.

Inherent or acquired distinctiveness

A trademark or service mark must be distinctive. This can be inherent in its nature. If not inherent, distinctiveness can be acquired through the public’s perception that the color or color pattern is associated with the product or service and with its source.

Multi-color patterning on product packaging

In the new case In re Forney Industries, Inc., Forney applied for a trademark on a color pattern to use on its welding-tool product packaging. (The link to the case brings readers to a version with an image of the proposed mark.) The mark consists of a color pattern with a solid black bar next to yellow one that gradually fades through varying shades of orange until it turns red.

The trademark examining attorney turned down the application saying that a color mark can never be inherently distinctive, and that Forney had not provided proof of acquired distinctiveness. On Forney’s appeal to the Trademark Trial and Appeal Board (TTAB), the TTAB agreed with the examining attorney.

USPTO position on color marks and distinctiveness

Our first link above is to our previous blog about color marks. In that blog, we link to the corresponding section of the Trademark Manual of Examining Procedure. (This manual contains U.S. Patent and Trademark Office (USPTO) guidelines for examining attorneys on trademark applications.) The manual interprets U.S. Supreme Court cases to hold what the examining attorney and the TTAB said in the Forney case: that color marks cannot have inherent distinctiveness.

Federal Circuit disagrees

The Court of Appeals for the Federal Circuit in the Forney case disagreed with the TTAB position that a multi-color mark can never be inherently distinctive. The court said that the Supreme Court’s previous holdings do not preclude granting a mark for a color on product packaging based on intrinsic distinctiveness.

The court explained that “a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.” Color in packaging is part of the image of a product that ties it to its source – an aspect of trade dress, which is registrable with the USPTO as a trademark.

The Forney court interpreted Supreme Court cases as distinguishing between color in a product design (as never inherently distinctive) from a question the high court left open: whether color in packaging design can be inherently distinctive as identifying the source of the product in the package.

The Federal Circuit also said that there is no case law to support the proposition that a multi-colored mark for packaging must have a border or shape to be valid.

Factors to determine inherent distinctiveness

The Federal Circuit sent the case back to the TTAB to reconsider whether Forney’s proposed mark has inherent distinctiveness on packaging. Will consumers associate the packaging’s color pattern with the source – Forney Industries.

Relevant factors the TTAB should consider include:

  • Is the proposed trade dress a common design?
  • Is it unique within the particular industry?
  • Is it a “mere refinement” of a widely used, publicly accepted “form of ornamentation” for a particular class of goods”?

The court also directed the TTAB to look at proposed mark in light of its combination and arrangement of color elements.

Binding Decision

The Federal Circuit is the court that hears appeals from the TTAB as well as from any U.S. District Court on trademark issues, so it carries significant weight on this question. The USPTO, of course, is the federal agency responsible registration of marks consistent with trademark law and is now bound by the Federal Circuit’s pronouncement on this issue.