In a case of first impression, the Board ruled that a color mark consisting of multiple colors applied to product packaging cannot be inherently distinctive. Consequently, since Applicant Forney Industries did not seek registration under Section 2(f) in the alternative, the Board affirmed a refusal to register the mark shown below, comprising the colors “red into yellow with a black banner located near the top as applied to packaging” for applicant’s metal hardware, welding equipment, safety goods and marking products. In re Forney Industries, Inc., Serial No. 86269096 (September 10, 2018) [precedential] (Opinion by Judge Linda A. Kuczma).

Nature of the Mark: Applicant maintained that the applied-for mark is not a “color mark,” but should be treated as product packaging and therefore capable of being inherently distinctive. However, the Board, based on the application drawing, agreed with Examining Attorney Emily K. Carlsen that the mark is a color mark, consisting of multiple colors applied to product packaging.

Here, the drawing shows Applicant’s mark surrounded by dotted or broken lines, indicating the mark’s placement on product packaging. The mark description confirms this understanding. It states that the dotted lines are used to “merely depict placement of the mark” on the packing backer card. 37 C.F.R. §2.52(b)(4) (requiring mark description to explain the purpose of the broken lines); see also TMEP § 807.08. The particular shape of the product packaging (which varies as revealed by the specimens) is not claimed as part of the mark. The only elements claimed by Applicant, as amended, in the applied-for mark are the colors as applied to “the packer backing card.”

On Forney’s specimens of use, the mark appears in “widely-differing shapes.” And so the Board concluded that the mark should be treated as a color mark, consisting of multiple colors applied to product packaging.

Registrability of the Mark: The Examining Attorney maintained that color marks are never inherently distinctive, citing Qualitex (green press pad) and Owens-Corning (pink insulation). The Board observed, however, that those two cases are distinguishable. They involved a single color, and the color was applied to a product.

Here, by contrast, the issues presented are: (A) whether there is a different rule for inherent distinctiveness for color marks applied to product packaging than for color applied to a product itself; and (B) whether the rule that single-color marks cannot be inherently distinctive applies to color marks consisting of more than one color.

Wal-Mart and Qualitex make clear that “a particular color on a product or its packaging” can never be inherently distinctive. Wal-Mart, 54 USPQ2d at 1068. Recently, in In re General Mills, the Board held that although a “color applied to a product or its packaging may function as a trademark … color can never be inherently distinctive as a source indicator.”

The Board saw no legal distinction between a single color mark and one consisting of multiple colors “without additional elements, e.g., shapes or designs.” It agreed with the analysis of the Tenth Circuit in Forney Indus., Inc. v. Daco of Mo., Inc., 120 USPQ2d 1035 (10th Cir. 2016) that, because there was no consistent shape, pattern, or design to the mark there at issue (which was similar to the mark here), applicant failed to establish an inherently distinctive trade dress.

We agree with the Tenth Circuit’s analysis of the relevant case law, and hold that a color mark consisting of colors applied to product packaging cannot be inherently distinctive, and may be registered on the Principal Register only upon adequate proof of acquired distinctiveness. Under that legal standard, we find that Applicant’s color mark which is not combined with a distinctive well-defined shape, pattern or other distinctive design is not inherently distinctive.

Conclusion: Colors alone cannot be inherently distinctive. Even if they could be, nothing in the record presented in this case indicates that Applicant Forney’s multiple color mark would be perceived as inherently distinctive. Because applicant did not request registration under § 2(f) in the alternative, acquired distinctiveness is not at issue.

And so the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: So multiple colors on a product can be inherently distinctive?

Text Copyright John L. Welch 2018.