The Federal Circuit recently overturned the United States Patent and Trademark Office’s decision in In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. April 8, 2020), which had refused to grant trademark protection to a gradient of multiple colors on product packaging. In reaching that decision, the Federal Circuit had relied on Supreme Court precedent stating that trademark protection could be granted to colors depending on the “character of the color design.”
In thinking about use of color in a product, we need to first think about how the color is being used. Is it purely being used for aesthetic purposes in the product itself? Is it being used to communicate a specific feature of the product such as a flavor of a candy or soda? Does it have some other utilitarian purpose, such as camouflage pattern for outdoor wear or neon orange for life vests to stand out in water? Or does the color serve to identify the brand? It is only the last which is able to be trademarked. Think about color schemes that are so strongly associated with a brand that customers immediately think of the company, such as Tiffany Blue or the red sole of a Christian Louboutin shoe. Like all trademark protection analyses, it comes down to how distinctive the color design is in relating to the brand. Essentially the question to ask is how strong an impression the proposed trademark makes on the customer in associating it with the brand.
Forney Industries, Inc. is a metal-working company that had initially applied for a trademark consisting of a “solid black stripe … [atop]… the color yellow which fades into the color red… located on… packaging and/or labels” for various welding and machining goods. The question was really about how distinctive this color mark was. The basis upon which it was denied the trademark was two-fold:
(1) The position that a multi-color mark could never be distinctive on its own, and that it could only be registered after showing proof of acquired distinctiveness or secondary meaning. This can be shown if customers have come to associate a mark with a company due to exposure over time or through advertising.
(2) A product packaging mark using multiple colors must have a well-defined peripheral shape or border in order to be distinctive enough.
However, both of these arguments failed because analysis of a multi-color mark should be based on how connected the source product brand could be to a consumer. There have been no Supreme Court decisions stating color designs cannot be distinctive or trademarked, and similarly no cases stating that a color design needs to have a peripheral shape or border to meet the distinctiveness threshold. Furthermore, the fact that the multi-color scheme is on the packaging, rather than simply a part of the product itself is proof that it is part of the trade dress meant to signal to consumers what brand the product is associated with, rather than mere aesthetic or some other reason insufficient for trademarking.
The Federal Circuit remanded and pointed to an alternative set of factors, enumerated in the case Seabrook Foods, Inc. v. BarWell Foods Ltd., to use for analyzing the facts of Forney.
(1) Whether the trade dress is a “common” basic shape or design,
(2) Whether it is unique or unusual in the particular field,
(3) Whether it is a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods or,
(4) Whether it is capable of creating a commercial impression distinct from the accompanying words.
The above factors are all various ways to determine whether or not a customer can look at the color mark and associate it as trade dress of a certain origin, or specific company. The design is not merely a “color mark” or “common”, but in fact a symbol for the origin. Forney also is not intending to “preempt the use of the colors red, yellow, and black,” but instead wants to protect them as arranged in a particular design or pattern. Furthermore, for this particular mark, it is the visual depiction of it, not any words that govern the impression. The Court ruled that judging based on these applied factors, the mark is sufficiently distinctive enough to convey to the consumer what the origin of the product is.
The Forney case clarifies that multi-color marks can be distinctive enough to be trademarked and recognized as part of the trade dress. The goal of the Seabrook analysis is to determine the “overall impression created by… the colors employed and the pattern created by those colors” and whether they sufficiently impress upon the consumer the origin of the product. Therefore, companies thinking about modifying or updating their marks can now be more assured that they can combine colors together as part of a mark. It is always good practice to consult a trademark attorney who can analyze a color mark in terms of its ability to be protected as an official trademark. Always be wary, however, of using color as a mark when it is primarily used for aesthetic purposes, utilitarian purposes, or in a way that is too common to signify a source.