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Coloring in the Lines – Protecting Colorful Product Packaging Just Became Easier

April 14, 2020

Last week, the U.S. Court of Appeals for the Federal Circuit, in In Re: Forney Industries, Inc., held that a multicolored mark, when used on product packaging, can be inherently distinctive, and thus eligible for federal trademark registration. The proposed mark consisted of the use of black next to a yellow to red color spectrum as shown below on tools and accessories for welding:

Reversing the Trademark Trial and Appeal Board’s (TTAB) refusal to register this color mark, the Federal Circuit notably rejected the TTAB’s requirement that such a mark required a showing of acquired distinctiveness to be registered.

Moreover, this proposed mark was the use of this combination of colors on packaging not limited to the border of the packaging or a specific shape. The TTAB had refused registration of this multicolor mark on the apparently alternative grounds that:

  1. A color mark can never be inherently distinctive – and thus acquired distinctiveness must be shown – in the packaging trade dress context.
  2. Such product packaging color marks also cannot be inherently distinctive without being associated with a well-defined peripheral shape or border of the packaging.

Reversing on both grounds, the Federal Circuit acknowledged that neither the Supreme Court nor the Federal Circuit had directly addressed whether a multicolor mark applied to product packaging can be inherently distinctive, but that the Supreme Court has “provided several data points on inherent distinctiveness of trade dress that inform[ed] [the Federal Circuit’s] inquiry.” 

The Federal Circuit also noted that the proposed multicolor mark was not just a color mark but also acted as a symbol. In this context, the Federal Circuit held that the mark could be inherently distinctive and determined that the key inquiry is whether, as used on product packaging, the combination of colors and the design those colors create are sufficiently indicative of the source of the goods contained in that packaging. 

Relying on the Supreme Court’s trade dress and color trademark jurisprudence, the Federal Circuit held that color marks applied to packaging trade dress could be registered as trademarks without a showing of acquired distinctiveness. It began its analysis with Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), wherein the Supreme Court held that trade dress may be inherently distinctive and entitled to protection without a showing of secondary meaning. Later, in Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162 (1995), the Court found “there is no rule absolutely barring the use of color alone” as a trade dress. And while Qualitex implied that a showing of acquired distinctiveness may be required before a trade dress mark based on color alone can be protectable, it did not expressly so hold. Lastly, in Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), the Court emphasized the importance of differentiating between colors applied to product packaging and colors applied to the products themselves (i.e., product design). Unlike product design, which the Court held is not inherently distinctive as it almost invariably serves purposes other than source identification, product packaging can indicate the source of the goods to a consumer and, therefore, can be inherently distinctive.

Notably, this decision clarifies the scope of trademark protection available for packaging by holding that there is no categorical bar to the registration as a trademark of a distinctive use of color in packaging and that such protection may be obtained without the additional requirement of showing acquired distinctiveness. The Federal Circuit’s decision opens up new pathways for businesses to develop branding that incorporates multicolor packaging and to register and enforce the use of such packaging as a trademark. For additional guidance or assistance with protecting your brand, please contact a Crowell & Moring attorney.

For more information, please contact the professional(s) listed below, or your regular Crowell & Moring contact.

Anne Elise Herold Li
Partner – New York
Phone: +1.212.895.4279
James K. Stronski
Senior Counsel – New York
Phone: +1.212.895.4217
David Ervin
Partner – Washington, D.C.
Phone: +1.202.624.2622
Michelle Chipetine
Associate – New York
Phone: +1.212.895.4221