The United States Court of Appeals for the Federal Circuit issued a major decision last week concerning the registrability of color trademarks. The case, In re Forney Industries, arose from the attempt of Forney Industries to register a mark consisting of an orange color gradually blending into yellow, with a black banner at the top. The mark was applied to packaging for welding equipment, metal hardware, and related goods, but not to the products themselves.
The Trademark Trial and Appeal Board, in a 2018 decision, had originally refused registration of Forney Industries’ mark. The Board relied upon statements in several prior Supreme Court cases in which the Supreme Court had stated that a color mark could never be inherently distinctive, meaning that a color mark cannot receive trademark protection unless the owner of the mark can show that the mark acquired distinctiveness, i.e., that consumers have come to recognize the color as a mark and to associate it exclusively with the trademark owner’s products or services.
The most noteworthy prior case regarding color marks is Qualitex Co. v. Jacobson Prods. Co., a 1984 decision in which the Supreme Court ruled that a single color (in this case a green color for dry cleaning pads) could only be protected if the mark had acquired distinctiveness. It has generally been understood that this case only applied to single colors and did not bar the registration of marks consisting of two or more colors.
However, in the original decision in the Forney case, the Board took the position that the references to “color marks” in Qualitex and other cases applied to all marks consisting solely of color, whether the mark was one color or claimed multiple colors. The Board distinguished cases in which other color combinations had been found to be inherently distinctive (such as the green body and yellow wheels of John Deere tractors) by arguing that those cases involved the application of colors to products in a defined pattern, rather than the pure color mark that Forney Industries was attempting to register.
On appeal to the Federal Circuit, the court disagreed with the reasoning employed by the Board. The Federal Circuit found that the prior statements made by the Supreme Court only applied to colors as part of the design of products, rather than colors used on product packaging. The Federal Circuit also disagreed with the Board’s statements that a color mark must be applied in a particular shape or pattern in order to be inherently distinctive, finding that there was no support for this holding in the controlling law. The Federal Circuit stated that, as with other types of marks, the relevant question in determining whether a color mark is distinctive is whether the overall elements of the mark are likely to be viewed by consumers as indicating the source of the products. The court therefore remanded the case to the Board to consider whether Forney Industries’ mark met this standard.
This decision should provide important clarity for trademark owners seeking to protect a mark consisting of two or more colors, regardless of whether those colors are applied in a particular shape or pattern. It can be extremely costly and time-consuming to build up the type of evidence that can be required to register a mark through acquired distinctiveness. However, now that the Federal Circuit has confirmed that a color mark can be registered based on inherent distinctiveness, brand owners will be able to protect their color combination marks as soon as they start using them, rather than having to show sustained use, high sales figures, and substantial advertising efforts in order to protect a color mark.
Finally, while this decision provides welcomed clarity as to color combination trademarks, it does not appear to affect the rule that a single color mark cannot be inherently distinctive, as the language used by the Federal Circuit throughout the decision consistently refers to “multicolor marks.” While there are examples of single colors that are registered as trademarks, such as Tiffany’s light blue color and UPS’s brown color, these marks have been registered based on showings of high levels of acquired distinctiveness, rather than inherent distinctiveness, and it is likely that any future trademark applicant seeking to register a single color will also have to clear a very high evidentiary burden of establishing acquired distinctiveness.