{"id":2603,"date":"2020-08-31T14:12:16","date_gmt":"2020-08-31T18:12:16","guid":{"rendered":"https:\/\/www2.law.temple.edu\/10q\/?p=2603"},"modified":"2020-08-31T14:12:16","modified_gmt":"2020-08-31T18:12:16","slug":"federal-circuit-throws-shade-on-ttabs-treatment-of-color-trademarks","status":"publish","type":"post","link":"https:\/\/law.temple.edu\/10q\/federal-circuit-throws-shade-on-ttabs-treatment-of-color-trademarks\/","title":{"rendered":"Federal Circuit Throws Shade on TTAB\u2019s Treatment of Color Trademarks"},"content":{"rendered":"

Pink insulation, green tractors, robins-egg blue jewelry boxes\u2014they all have something in common: recognizable colors that many associate with products. But can colors be registered as trademarks and, if so, when? On April 8, 2020, the United States Court of Appeals for the Federal Circuit overruled the United States Patent and Trademark Office\u2019s Trademark Trial and Appeal Board (\u201cTTAB\u201d) and, in doing so, provided welcome guidance for trademark owners and practitioners on the nuanced area of protecting trademarks consisting solely of colors.<\/p>\n

The Court\u2019s Holding <\/strong><\/h2>\n

In In re Forney Industries, Inc.<\/em>,\u2009 955 F.3d 940 (Fed. Cir. 2020), the Federal Circuit considered whether color on product packaging could be inherently distinctive trade dress, warranting trademark protection. The Federal Circuit\u2019s answer was \u201cyes:\u201d multi-color marks on product packaging can be inherently distinctive and may be entitled to trademark protection. Id<\/em>. at 945.<\/p>\n

The Trademark Application and the TTAB\u2019s Ruling<\/strong><\/h2>\n

Forney Industries, Inc. applied for protection of trade dress for its industrial tools and hardware, which uses the colors red, yellow, and black in a gradient pattern on product packaging:<\/p>\n

\"\"\"\"<\/p>\n

The TTAB rejected Forney\u2019s application, finding that in the trade dress context, a showing of acquired distinctiveness is required.<\/p>\n

The Court\u2019s Reasoning<\/strong><\/h2>\n

The Federal Circuit vacated the TTAB\u2019s ruling, and held that \u201ccolor marks can be inherently distinctive when used on product packaging.\u201d Id<\/em>. Adding more color to its guidance, the Federal Circuit explained that making the \u201cinherently distinctive\u201d determination for color-based product packaging marks requires analyzing whether:<\/p>\n

(1) the trade dress is a \u201ccommon\u201d basic shape or design; (2) it is unique or unusual in the particular field; (3) 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) it is capable of creating a commercial impression distinct from the accompanying words.<\/p>\n

Id<\/em>. at 947. The ultimate question, therefore, is whether the use of color on product packaging is sufficiently indicative of the source of the goods contained in that packaging. Id.<\/em><\/p>\n

Guidance for Trademark Owners<\/strong><\/h2>\n

Forney <\/em>and its precursors provide several key takeaways for those seeking trademark protection over color-only trade dress:<\/p>\n