My previous article, published in IP Litigator and the BakerHostetler IP Intelligence Blog, noted the Trademark Office’s tough stance on registering color patterns as trademarks in its In re Forney decision. There, the Trademark Trial and Appeal Board ruled that a color pattern could never be inherently distinctive even when used on packaging to identify source. Practically speaking this meant that if you wanted to register a color pattern used on product packaging, you would need to have evidence that the color pattern had acquired distinctiveness. This presents two difficulties. First, proof of acquired distinctiveness often requires several years of exclusive use, consistent “look for” advertising campaigns and a bit of luck at the trademark office. The second difficulty is that while you are attempting to build up acquired distinctiveness, there is little, if any, protection available to exclude others from using a confusingly similar color pattern.
The fact that In re Forney dealt with a color pattern on packaging provided a unique opportunity to resolve treatment of color in the context of the Supreme Court’s Two Peso’s decision that held that packaging can be inherently distinctive. The Board, however, relied on the Supreme Court’s Qualitex decision and Justice Scalia’s characterization of that decision in Wal-Mart to conclude that color can never be inherently distinctive as a trademark even when applied to packaging.
As you might have guessed from my original blog post, I believed that the Trademark office had misread Qualitex and Wal-Mart to foreclose the possibility that Forney’s color pattern could be inherently distinctive as a trademark. Recently, Forney’s counsel, Bill Cochran and James Young from Cochran, Freund and Young, reached out to let me know that the Federal Circuit had agreed with this assessment and overturned the Trademark Office’s ruling and remanded the case for reconsideration.
Justice O’Malley wrote for the Federal Circuit holding that the trademark Board erred in finding that a color pattern could never be inherently distinctive, or that a color pattern has to be tied to a distinctive peripheral shape to be distinctive. The court reasoned that Forney’s packaging is more akin to the Two Pesos decision and falls within the category of marks that the Supreme Court described as potential source identifiers. Moreover, the Supreme Court decisions in Qualitex and Wal-mart did not reach the question of whether color marks on product packaging can be inherently distinctive. Pointing out that the Board’s decision was based on erroneous footing, the court remanded the case directing the Board to the Seabrook decision as identifying factors for determining whether trade dress is inherently distinctive and highlighting that Forney correctly argued that the proposed mark is not just a “color mark,” but also a “symbol.” It instructed the Board, on remand, to consider the pattern created by Forney’s colors when considering whether it creates a design that is inherently distinctive.
This decision breaths new life into color marks applied to product packaging by removing a black letter prohibition against registering these marks without proof of acquired distinctiveness. In practice, I have always advocated for the use of color as a source identifier since consumers often distinguish sources based on color before they view traditional word marks or logos. Having moved from a law firm setting to an in-house role, I am more keenly aware of the investment in product packaging, and the importance of this decision in providing at least a chance to register color marks before meeting the difficult and time-consuming acquired distinctiveness standard. That said, my original advice to use “look for” advertising and consistent use of color to communicate trademark use to the public should be followed. While the Forney decision provides the possibility of inherent distinctiveness in the context of a color pattern, trademark applicants will still need to convince an examiner that their design is inherently distinctive. Nevertheless, I applaud the Federal Circuit's decision since it will foster further creativity to demonstrate packaging color patterns are inherently distinctive, and assist consumers in distinguishing the source of products when such color patterns are used on packaging.
