Lewis Roca Blog

In In re Forney Industries, decided on April 8, 2020, the Federal Circuit vacated the decision of the Trademark Trial and Appeal Board (the "TTAB")—which had denied registration of Forney's multi-color product packaging mark—and held that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design."

Facts

Forney uses its mark—consisting of "the color red fading into yellow in a gradient, with a horizontal black bar at the end of the gradient"—on packaging for welding and machining tools and accessories. The TTAB affirmed an examining attorney's denial of registration of the mark on the Principal Register because Forney did not provide proof of acquired distinctiveness.

The Federal Circuit determined that the TTAB erroneously interpreted three Supreme Court decisions—Two Pesos, Qualitex, and Wal-Mart v. Samara Bros.—in support of a faulty proposition that a claim to a particular color on product packaging may never be inherently distinctive without additional distinctive elements. The court highlighted the TTAB's failure to distinguish between product design marks (which are never inherently distinctive) and product packaging marks (which may be inherently distinctive).

The court explained that product packaging (i.e., a type of trade dress) may be inherently distinctive if it "'makes such an impression on consumers that they will assume' the trade dress is associated with a particular source" and declared that the TTAB must assess the Seabrook factors in making this determination.[1] Further, the court agreed with Forney that its "mark is not just a 'color mark,' but also a 'symbol'" because Forney's claimed mark consists of a particular combination and arrangement of colors, rather than a claim to all uses of those colors. Accordingly, the TTAB must make its determination "based on the overall impression created by both the colors employed and the pattern created by those colors."

Takeaway

Before this decision, many would have erred like the TTAB in thinking that the case law made it clear that colors alone can never be inherently distinctive. Now, trademark applicants with multi-color marks used on product packaging—that may be lacking proof of acquired distinctiveness—have a green light to protect their inherently distinctive arrangement of colors separately from words and designs.