Federal Circuit Throws Shade on TTAB’s Treatment of Color Trademarks

Pink insulation, green tractors, robins-egg blue jewelry boxes—they all have something in common: recognizable colors that many associate with products. But can colors be registered as trademarks and, if so, when? On April 8, 2020, the United States Court of Appeals for the Federal Circuit overruled the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) and, in doing so, provided welcome guidance for trademark owners and practitioners on the nuanced area of protecting trademarks consisting solely of colors.

The Court’s Holding

In In re Forney Industries, Inc.,  955 F.3d 940 (Fed. Cir. 2020), the Federal Circuit considered whether color on product packaging could be inherently distinctive trade dress, warranting trademark protection. The Federal Circuit’s answer was “yes:” multi-color marks on product packaging can be inherently distinctive and may be entitled to trademark protection. Id. at 945.

The Trademark Application and the TTAB’s Ruling

Forney Industries, Inc. applied for protection of trade dress for its industrial tools and hardware, which uses the colors red, yellow, and black in a gradient pattern on product packaging:

The TTAB rejected Forney’s application, finding that in the trade dress context, a showing of acquired distinctiveness is required.

The Court’s Reasoning

The Federal Circuit vacated the TTAB’s ruling, and held that “color marks can be inherently distinctive when used on product packaging.” Id. Adding more color to its guidance, the Federal Circuit explained that making the “inherently distinctive” determination for color-based product packaging marks requires analyzing whether:

(1) the trade dress is a “common” basic shape or design; (2) it is unique or unusual in the particular field; (3) it is 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, inapplicable here, (4) it is capable of creating a commercial impression distinct from the accompanying words.

Id. at 947. The ultimate question, therefore, is whether the use of color on product packaging is sufficiently indicative of the source of the goods contained in that packaging. Id.

Guidance for Trademark Owners

Forney and its precursors provide several key takeaways for those seeking trademark protection over color-only trade dress:

  • Generally, trade dress can be inherently distinctive and obtain trademark protection. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776 (1992).
  • While Forney makes clear that color-based product packaging can be inherently distinctive, color-based product design marks cannot. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12 (2000).
  • While “there is no rule absolutely barring the use of color alone as trade dress,” some courts may require a showing that single-color trade dress has attained secondary meaning, or acquired distinctiveness, before granting trademark protection. Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162-63 (1995).
  • Where possible, efforts should be made to draw attention to the color trade dress as a trademark, whether in “look for” advertising or other references that identify the color as a mark.

Practically speaking, many practitioners would espouse that protecting color trade dress is an uphill battle. But with concerted efforts, those using color trade dress now have a clearer path to trademark protection.

For the full text of the article, please visit: https://www.blankrome.com/publications/federal-circuit-throws-shade-ttabs-treatment-color-trademarks

For additional information, please contact:

David M. Perry, Philadelphia Office Partner and Co-Chair, Intellectual Property & Technology 215.569.5767 | perry@blankrome.com

Jillian M. Taylor, Philadelphia Office Associate, Intellectual Property & Technology 215.569.5576 | jmtaylor@blankrome.com



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