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Federal Circuit Lowers Restrictions on Obtaining Registration of Color Marks
April 14, 2020

By Michael J. Berkowitz

Businesses rely upon color for a variety of purposes. For example, colors may provide ornamentation, or may serve to allow a product to blend in with its surroundings (camouflage for hunting gear) or indicate a product’s flavor (yellow for lemon). Importantly, colors can serve as trademarks, but only if they function as a source identifier.

While colors are not included within the statutory definition of trademarks, since 1985, singular colors and color combinations can be trademarked as part of a product, package or service, if, like any other trademark, they serve a source identification function, and do not serve a merely decorative or utilitarian purpose.

Examples of protectable color marks include: red soles for women’s high-heel dress shoes (Louboutin); pink fiberglass insulation (Owens-Corning); red knobs on cooking appliances (Wolf); light blue for jewelry boxes (Tiffany); brown for parcel delivery trucks and uniforms (UPS); magenta for telecommunications services (T-Mobile); and orange for scissor handles (Fiskars).

On April 8, 2020, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling defining when colors can be protected as trademarks: In Re: Forney Industries, Inc., No. 19-1073 (Fed. Cir. 2020). The Fortney decision overturns a 2018 ruling by the Trademark Trial and Appeal Board (“Board”) stating that industrial toolmaker, Fortney Industries, Inc., was not allowed to register a black, yellow and red design (below) as trade dress for use on packaging for welding tools and accessories.

Forney Industries color scheme

The Board concluded that a particular color on a product or its packaging can never be inherently distinctive and may only be registered upon a showing of acquired distinctiveness. Such a showing often is difficult and may involve demonstrating years of use of the color as a source identifier, advertising expenses promoting the color as a source identifier, declarations of the trademark owner and/or its customers, or distributors, survey evidence, and/or market research. It could take years and substantial expenditures to demonstrate acquired distinctiveness.

The Federal Circuit ruled that the Board erred in this holding stating that it had exaggerated the restrictions on such trademarks.

U.S. Circuit Judge Kathleen M. O’Malley wrote for a three-judge panel stating “We hold that color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design,”

“While it is true that color is usually perceived as ornamentation, distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive,” Judge O’Malley wrote.

“We do not believe that, to date, the Supreme Court has gone as far as the Board did here, where the mark is proposed for product packaging, as distinct from product design,” Judge O’Malley wrote.

“It is possible that such a mark can be perceived by consumers to suggest the source of the goods in that type of packaging,” the judge wrote. “Accordingly, rather than blanketly holding that colors alone cannot be inherently distinctive, the Board should have considered whether Forney’s mark satisfies this court’s criteria for inherent distinctiveness.”

In view of the Federal Circuit’s Fortney decision, businesses should re-evaluate their product packaging to determine whether color schemes employed therein are being used as source identifiers and re-consider whether pursuing federal registration is worthwhile effort.