IP Law Daily Product packaging trade dress based on color may be inherently distinctive
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Wednesday, April 8, 2020

Product packaging trade dress based on color may be inherently distinctive

By Cheryl Beise, J.D.

The TTAB erred in holding that color marks are never inherently distinctive when used on product packaging. Color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.

The Trademark Trial and Appeal Board erred by holding that a multi-color mark used on product packaging can never be inherently distinctive, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s alternate holding—that product packaging marks that employ color can only be inherently distinctive when combined with a distinctive peripheral shape or border—also was erroneous. Supreme Court precedent indicates that color marks on product packaging may be inherently distinctive to identify the source of a product. The issue was whether the combination of colors and the design those colors create are sufficiently indicative of the source of the goods contained in in product packaging. On remand, the Board was to apply this standard in evaluating whether Forney Industry’s mark—comprised of the color red fading into yellow in a gradient, with a horizontal black bar at one end—is an indicator of source when used on metalworking parts packaging. The Board was further instructed to make its assessment "based on the overall impression created by both the colors and the pattern created by those colors" (In Re: Forney Industries, Inc., April 8, 2020, O'Malley, K.).

In 2014, Forney Industries, Inc. ("Forney"), applied to register on the Principal Register a color mark consisting of the colors black, yellow, and red, for use on packaging in connection with various metallurgic products in International Class 6 and products related to metal working in Classes 7 and 9, 16, and 17. The application included the following description: "The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card." The trademark examining attorney refused registration of the proposed mark on the Principal Register on the ground that it the mark was not inherently distinctive under Sections 1, 2, and 45 of the Lanham Act. Forney appealed to the TTAB.

In 2016, before conclusion of the Board proceeding, the U.S. Court of Appeals in Denver had affirmed dismissal an infringement suit Forney brought against a competitor on the ground that Forney failed to establish trade dress protection for a similar multi-color mark used on product packaging on the ground that the mark was not inherently distinctive and Forney failed to offer sufficient evidence of acquired distinctiveness. Forney Indus., Inc. v. Daco of Missouri, Inc. , 835 F.3d 1238 (10th Cir. 2016) (Forney I).

Before the Board, Forney argued that its proposed mark should be treated as product packaging claiming multiple colors. The Board affirmed the examining attorney’s refusal to register. The Board found that a particular color on a product or its packaging "can never be inherently distinctive and may only be registered on a showing of acquired distinctiveness." The Board alternatively held that a color mark applied to product packaging may be inherently distinctive where there is an association with a well-defined peripheral shape or border. Applying that standard, Forney’s mark was not inherently distinctive. Forney appealed the Board’s decision.

The Federal Circuit addressed the Board’s findings (1) that a color mark can never be inherently distinctive in the trade dress context and (2) that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border.

Distinctiveness of color mark on trade dress. Trade dress is registrable as a trademark if it serves the same source-identifying function as a trademark. A product’s trade dress is protectable upon a showing of inherent distinctiveness or upon a showing that the trade dress has become distinctive of the applicant’s goods.

The Federal Circuit disagreed with the Board’s determination that Supreme Court case law, "make[s] clear that color, whether used on a product or its packaging, can never be inherently distinctive." The court pointed out that the Supreme Court has not directly addressed whether a multi-color mark applied to product packaging can be inherently distinctive.

However, the High Court has provided "several data points on inherent distinctiveness of trade dress." First, the Court’s Two Pesos decision established that trade dress can be inherently distinctive without a showing of secondary meaning. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 776 (1992). Next, the Court’s Qualitex decision "implied that a showing of acquired distinctiveness may be required before a trade dress mark based on color alone can be protectable, but it did not expressly so hold," the Federal Circuit said. See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995). Later, in Wal-Mart, the Court differentiated between two types of proposed trade dress marks—product design and product packaging marks. The Court explained that product design trade dress based on color is never inherently distinctive, whereas color marks on product packaging may be inherently distinctive to identify the source of a product. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-212 (2000).

Forney’s proposed color mark fell squarely within the product packaging category, according to the Federal Circuit. Forney’s proposed mark—comprised the color red fading into yellow in a gradient, with a horizontal black bar at one end of the gradient— "can be perceived by consumers to suggest the source of the goods in that type of packaging," the court said. The Tenth Circuit in Forney I agreed that "the use of color in product packaging can be inherently distinctive … in appropriate circumstances." Forney I at 1248.

The Federal Circuit concluded that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design."

Distinctiveness based on shape. The Federal Circuit next held that the Board erred when it determined that product packaging marks that employ color cannot be inherently distinctive in the absence of an association with a distinctive peripheral shape or border. Nothing in the case law supported such a conclusion.

The key question is whether the trade dress "makes such an impression on consumers that they will assume" the trade dress is associated with a particular source, the court said. The court recited the Seabrook factors the Board should have considered in making that determination: (1) whether the trade dress is a "common" basic shape or design; (2) whether it is unique or unusual in the particular field; (3) whether 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; and (4) whether it is capable of creating a commercial impression distinct from the accompanying words. Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977).

Forney contended that its proposed mark was not just "a color mark," but also a "symbol." The court agreed, explaining that Forney was not attempting to preempt the use of the colors red, yellow, and black, but instead sought to protect only the particular combination of these colors, arranged in a particular design, as shown in the drawing submitted for its proposed mark.

The Federal Circuit vacated the Board’s decision and remanded the case. The question the Board must answer on remand is "whether, as used on its product packaging, the combination of colors and the design those colors create are sufficiently indicative of the source of the goods contained in that packaging." The court also instructed the Board to assess that question "based on the overall impression created by both the colors employed and the pattern created by those colors."

This case is No. 19-1073.

Attorneys: William W. Cochran II (Cochran Freund & Young LLC) for Forney Industries, Inc. Mary Beth Walker for the USPTO.

Companies: Forney Industries, Inc.

MainStory: TopStory Trademark GCNNews USPTO

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