In a hotly debated decision, the U.S. Court of Appeals for the Federal Circuit ruled on April 8th that a multiple-color mark shown on product packaging may be inherently distinctive, and therefore available for trademark registration without a showing of acquired distinctiveness. Narrowly construing a line of U.S. Supreme Court precedent detailing the circumstances under which color may be recognized as a trademark, the Federal Circuit found that “a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.” The Fed. Circuit’s decision rejects registration requirements imposed by the United States Patent and Trademark Office for color marks used on product packaging, potentially expanding trademark protection available for package/color combinations.
In In re: Forney Industries, Inc., No. 2019-1073, *7 (April 8, 2020), the applicant sought to register a mark used on packaging for its welding supply products comprised of a solid black stripe at the top, with yellow fading to red below. A copy of the mark covered by Forney’s application, and an example of such mark used at market, are shown below:
The Examining Attorney rejected Forney’s application on the basis that Forney failed to submit evidence of acquired distinctiveness – also known as secondary meaning – to prove that consumers recognized the colors as an identification of source. Following the U.S. Supreme Court’s decision in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000), and citing Trademark Manual of Examining Procedure §1012.05, the Examining Attorney stated that “[c]olor marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f).” The Trademark Trial and Appeal Board affirmed the Examining Attorney’s determination on the same grounds, and Forney appealed the rejection to the Federal Circuit.
After narrowly navigating three U.S. Supreme Court decisions discussing trademark protection of colors, product packaging and trade dress, the Federal Circuit vacated the USPTO’s rejection of Forney’s application, and remanded the matter for reconsideration. Weaving together both statements and silences of the Supreme Court in Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 764, 776 (1992)(“proof of secondary meaning is not required to prevail on a claim under § 43(a) of the Lanham Act where the trade dress at issue is inherently distinctive”), Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 161 (1995)(“sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark.”) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000)(holding that registration of a product design requires a showing secondary meaning), the Federal Circuit concluded that none of such cases settled the question as to whether a composition of colors on product packaging – as compared to a single color on a product itself – could be inherently distinctive. The Federal Circuit reasoned that the Supreme Court’s decisions indicated that acquired distinctiveness was appropriate for color in product design because product design, unlike product packaging, generally plays a role other than merely product identification. See In re Forney at *8. The Federal Circuit went on to state that by contrast, Qualitex recognized that “[t]he attribution of inherent distinctiveness to certain categories of . . . product packaging derives from the fact that the very purpose of . . . encasing [a product] in a distinctive packaging, is most often to identify the source of the product.” Id.
Free of applicable Supreme Court authority, the Federal Circuit held that a multi-color product packaging mark “can be perceived by consumers to suggest the source of the goods in that type of packaging.” In re Forney at *9. The Court held that to assess whether inherent distinctiveness exists for a multi-color product packaging mark, the USPTO must consider: “(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, (4) whether it is capable of creating a commercial impression distinct from the accompanying words.” Id. at 10, citing Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977). Because Forney sought to protect “only the particular combination of these colors, arranged in a particular design” rather than a color or colors per se, the Federal Circuit concluded that the USPTO erred in stating that a multi-color product packaging mark can never be inherently distinctive, and remanded the case for reconsideration consistent with its opinion. Id. at 11.
The Forney ruling upsets the generally recognized requirement that all color marks lack inherent distinctiveness, and that proof of secondary meaning is necessary for registration on the Principal Register. Forney is likely to be reheard en banc by the Federal Circuit, or by the U.S. Supreme Court on a writ of certiorari. If the ruling stands, opportunity will exist for companies to secure exclusive rights in multiple color package designs. At least for the time being, package designs comprising a single color remain registrable only upon a showing of secondary meaning.