By Cheryl Beise, J.D.
Retail metalworking parts manufacturer Forney Industries failed to establish that that the color combination used in its product packaging was either inherently distinctive or had acquired distinctiveness to qualify for federal trade dress protection, the U.S. Court of Appeals in Denver has held. The federal district court in Denver did not err in granting summary judgment to Forney’s competitor, Draco of Missouri, on Forney’s infringement claims (Forney Industries, Inc. v. Daco of Missouri, Inc., August 29, 2016, Hartz, H.).
Since at least 1989, Forney’s product packaging has used some combination of red, yellow, black, and white coloration. Forney argued that its use of a particular color combination and arrangement on its product packaging—beginning with the background color red on the bottom of the packaging, merging into yellow, with a black banner/header with white letters—constituted a distinctive color mark (the "Forney Color Mark"). Forney’s Color Mark trade dress, was not registered.
Forney sued competing manufacturer, Daco of Missouri, Inc., dba KDAR Co., claiming that packaging of KDAR’s products—using a substantially similar color combination—infringed on Forney’s trade dress under the Lanham Act and violated Colorado law. Concluding that no reasonable jury could find that Forney’s Color Mark had acquired secondary meaning on the record, the district court granted KDAR’s motion for summary judgment on Forney’s Lanham Act claims, dismissed KDAR’s counterclaims as moot, and declined to exercise supplemental jurisdiction over Forney’s state-law claims. Forney appealed.
Inherent distinctiveness. The Tenth Circuit first addressed the standard for protectability of color on product packaging. "In light of the Supreme Court’s directive that a product’s color cannot be inherently distinctive and its concern that inherent distinctiveness not be the subject of excessive litigation," the appeals court held that "the use of color in product packaging can be inherently distinctive (so that it is unnecessary to show secondary meaning) only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design."
The court explained that it found no case that supported the proposition that a color scheme or palette, in and of itself, was inherently distinctive. In each case where the color component of trade dress was determined to be inherently distinctive, the color was used in combination with a shape, pattern, or other distinctive design, the court said. In contrast, when courts have considered a color scheme or palette in isolation, the analysis turned on whether the plaintiff had proved secondary meaning.
In this case, Forney’s description of its trade dress was too vague to satisfy the requirement that the color scheme be used in combination with a well-defined shape, pattern, or other distinctive design, the court observed. The record showed that Forney had used the combination of red, yellow, white, and black in such diverse ways over the years that there was "no consistent shape, pattern, or design" that could be discerned from Forney’s description of its mark or from the examples it provided. Consequently, Forney failed to establish that its trade dress was inherently distinctive.
Secondary Meaning. The court next considered Forney’s evidence of secondary meaning. Trade dress acquires secondary meaning when, in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself.
To show secondary meaning, Forney offered no direct evidence of secondary meaning (e.g., consumer surveys), but relied on circumstantial evidence: (1) extensive promotional and advertising efforts at more than 10,000 stores that featured products bearing the Forney Color Mark in Forney Displays over each of the past 25 years; (2) over half a billion dollars in sales of over 4,000 different products bearing the Forney Color Mark over the past 25 years; and (3) a constant connection over 20 years between the Forney Color Mark and Forney as the source of the products.
The court noted that advertising alone is typically unhelpful to prove secondary meaning when it is not directed at highlighting the trade dress. On appeal, Forney did not challenge the district court’s finding that Forney’s advertising "utterly fails to mention the Color Mark, or to emphasize it in any fashion." Forney’s evidence of sales data was similarly unavailing because it gave no indication of how its sales related to the Forney Color Mark.
Finally, Forney failed to make a sufficient showing the claimed colors to survive summary judgment. Statements by Forney’s chief executive officer were conclusory. Forney offered examples of four competitors’ packaging, but KDAR offered other pictures showing product packages in the retail-metalworking sector that bore a close resemblance to Forney’s product packaging. Moreover, Forney could not claim exclusive use of its trade dress for 20 years, since it had not even continuously used the same trade dress, the court observed.
Because Forney pointed to no other evidence of secondary meaning, the appeals court affirmed the district court’s grant of summary judgment to that KDAR.
The case is No. 15-1226.
Attorneys: Christopher Benson and William W. Cochran (Cochran Freund & Young) for Forney Industries, Inc. Jack D. Robinson (Spies, Powers & Robinson, P.C.) for Daco of Missouri, Inc. dba KDAR Co.
Companies: Forney Industries, Inc.; Daco of Missouri, Inc. dba KDAR Co.
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