Marking a significant departure from Trademark Manual of Examining Procedure guidelines, the US Court of Appeals for the Federal Circuit overturned an administrative decision by the Trademark Trial and Appeal Board that had refused registration on the basis that color-based trade dress marks can never be inherently distinctive, finding the Board’s decision inconsistent with Supreme Court precedent.
Color marks have historically posed an array of challenges for trademark owners, from registrability to enforcement. In Qualitex Co. v. Jacobson Products Co., the US Supreme Court made clear that there was no “theoretical objection to the use of color alone as a trademark, where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand.”
In another landmark trade dress decision, Wal-Mart Stores, Inc. v. Samara Brothers, the Supreme Court drew a distinction between product design and product packaging, holding that product design is incapable of inherent distinctiveness because it almost invariably serves a function other than source identification, and therefore, “design, like color, is not inherently distinctive.”
In the present case, Forney Industries, Inc. applied to register a color mark comprising a solid black stripe at the top and yellow that fades into the color red (shown below) for use in connection with various tools used in welding. Significantly, here Forney expressly indicated that the colors should be applied to product packaging in its description of the mark.
The US Patent and Trademark Office’s examining attorney refused registration, finding that the mark was not registrable absent evidence that the asserted trade dress had acquired secondary meaning. The Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney’s refusal to register Forney’s application, agreeing that “[w]hen assessing marks consisting of color, there is no distinction between color(s) applied to products and color(s) applied to product packaging,” concluding that neither is capable of inherent distinctiveness.
On appeal, the Federal Circuit interpreted the Wal-Mart decision narrowly, finding that its holding that color marks as a category can never be inherently distinctive was limited to product design, not product packaging. As a result, the court held that the TTAB erred in failing to assess whether Forney’s proposed packaging satisfied the criteria for inherent distinctiveness.
To determine when color may be inherently distinctive, the Federal Circuit looked to a prior decision, Forney Industries, Inc. v. Daco of Missouri, Inc., for guidance. In that case, the US Court of Appeals for the Tenth Circuit held that color in product packaging can be inherently distinctive only if the colors are used in combination with “a well-defined shape, pattern, or other distinctive design.” The TTAB’s opinion articulated a similar test to the Tenth Circuit’s limitation on the use of color in combination with a shape, pattern, or design, finding that color may only be inherently distinctive when used in connection with a distinctive peripheral shape or border.
The Federal Circuit, however, rejected both the Tenth Circuit’s and the TTAB’s limitations on color-based marks used in connection with product packaging. Instead, the Federal Circuit held that the test for inherent distinctiveness of trade dress must ask whether the trade dress makes an impression on consumers that they will assume the trade dress is associated with a particular source.
The Federal Circuit adopted the Seabrook test for assessing whether trade dress is inherently distinctive, instructing the TTAB to analyze the following factors:
This decision marks a significant shift in guidance for examining attorneys presented with trade dress for color as applied to product packaging. The Trademark Manual of Examining Procedure currently states that color marks are “never inherently distinctive,” and instructs examining attorneys to refuse registration to a color mark on the Principal Register unless the applicant establishes that the proposed mark has acquired distinctiveness.
The Federal Circuit decision opens the door for rights holders to register color-based product packaging marks without proof of secondary meaning, potentially entitling rights holders to registration upon first use of the mark, rather than having to accrue secondary meaning in a mark before registration. In light of this significant shift, rights holders should partner with intellectual property counsel to consider strategies for protecting their rights in color-based trade dress.
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 514 U.S. 159 (1995).
 Id. at 163.
 Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 213-14 (2000).
 In re Forney Indus., Inc., No. 2019-1073, 2020 WL 1696314, at *1 (Fed. Cir. Apr. 8, 2020).
 In re Forney Indus., Inc., 127 U.S.P.Q.2d 1787, at *4-6 (T.T.A.B. 2018).
 835 F.3d 1238, 1248 (10th Cir. 2016)
 In re Forney Indus., Inc., No. 2019-1073, 2020 WL 1696314, at *5 (Fed. Cir. Apr. 8, 2020) (citing Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977).
 Trademark Manual of Examining Procedure § 1202.05(a) Color Marks Never Inherently Distinctive (citing Wal-Mart, 529 U.S. at 211-12).