Can you Trademark a Color?
Color can function as a trademark in certain situations when the color (1) serves as an indicator of source, and (2) does not have any utilitarian purpose (i.e. the color is not functional). In fact, a trademark can include “any word, name, symbol, or device, or any combination thereof” that is used “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the good.” 15 U.S.C. § 1127. Furthermore, trade dress can serve as a trademark if it functions to identify a source and is protectable under trademark law upon a showing of inherent distinctiveness or if it has acquired distinctiveness in commerce. Examples of color trademarks include the red soles of women’s shoes sold by Louboutin and the pink fiberglass insulation sold by Owens-Corning.
In re Forney
In May of 2014, Forney Industries, Inc. sought federal registration of its trademark for the color drawing below consisting of “the colors red into yellow with a black banner located near the top as applied to packaging for the goods.” See U.S. Trademark Serial No. 86/269,096. During examination at the United States Patent and Trademark Office (USPTO), the Examining Attorney refused registration of the trademark application for not being inherently distinctive. When the Examining Attorney issued a subsequent Office Action, Forney then appealed the decision to the Board. Id. The Board affirmed the refusal to register and Forney appealed to the Federal Circuit. Id.
Earlier this month, the Federal Circuit then held that “color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.” In re Forney Indus., Inc., 2019-1073, 2020 WL 1696314, at *3 (Fed. Cir. Apr. 8, 2020). The Court reasoned that Forney’s mark is an indicator of source that is similar to the issues presented in Two Pesos (holding that inherently distinctive trade dress is protectable without a showing of secondary meaning), rather than the issues in either Qualitex or Wal-mart. In particular, the court stated that color marks “can be perceived by consumers to suggest the source of the goods in that type of packaging” and that “the Board should have considered whether Forney’s mark satisfies this court’s criteria for inherent distinctiveness.” Id. at 4.
In the end, the Federal Circuits decision lays the groundwork for trademark applicants seeking to protect a color or multi-color trademark. Specifically, applicants may have an easier route to obtaining a registered trademark on a color, when that color is part of the product’s packaging in view of the Federal Circuit “hold[ing] that color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.” Id. at 3.