In order for a trademark to be protectable, it must be distinctive, either by being inherently distinctive or by acquiring distinctiveness (often referred to as “secondary meaning”). In the case of Two Pesos, Inc. v. Taco Cabana, Inc. (505 U.S. 763 (1992)), the Supreme Court ruled that trade dress (the appearance of a product or its packaging) can be inherently distinctive. Further, in the case of Qualitex Co. v. Jacobson Prod. Co. (514 U.S. 205 (2000)), the Supreme Court ruled that color as applied to a product may serve as a trademark upon a showing of acquired distinctiveness.
In In re Forney Indus., Inc., however, the appellant had filed a trademark application to register a mark for packaging of welding and machining goods, where the mark consisted of “colors red into yellow with a black banner located near the top as applied to packaging for the goods”, with dotted lines depicting placement of the mark on a packing backer card.
The Court of Appeals for the Federal Circuit reviewed the Board of Patent Appeal’s ruling that: (1) a color mark can never be inherently distinctive in the trade dress context and (2) that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border.
The Federal Circuit noted that neither it nor the Supreme Court has directly addressed whether a multi-color mark applied to product packaging can be inherently distinctive. The Federal Circuit noted that in Wal-Mart Stores, Inc. v. Samara Bros. (529 U.S. 205 (2000), the Supreme Court determined that “design, like color, is not inherently distinctive” in the case of product design marks (as compared to product packaging marks), owing to the fact that product design “almost invariably serves purposes other than source identification.” The Federal Circuit noted, however, that the very purpose of encasing a product in distinctive packaging is most often to identify the source of the product. Thus, consistent with a similar holding from the Court of Appeals for the Tenth Circuit (Forney Indus., Inc. v. Daco of Missouri, Inc., 835 F.3d 1238 (10th Cir. 2016), the Federal Circuit ruled that color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design – namely, whether consumers would be predisposed to equate the color feature with the source.
The Federal Circuit also ruled that the Board erred in ruling that the multi-color mark must be associated with a specific peripheral shape in order to be inherently distinctive. The Federal Circuit indicated that the Board must determine whether, as used on its product packaging, whether the combination of colors and the design those colors create are sufficiently indicative of the source of the goods container in the packaging, based upon the overall impression created by both the colors employed and the pattern crated by those colors.
