Forney in the Black as Federal Circuit Holds Color Trade Dress May Be Inherently Distinctive

Forney Industries filed a trademark application on the Principal Register for the color mark shown below for packaging for welding and machining goods.  

Forney sought to register the mark without the showing of secondary meaning, and the USPTO Examining Attorney refused registration on the ground that the mark was not inherently distinctive and required proof of acquired distinctiveness to be registrable on the Principal Register. 

On appeal to the TTAB, the Board reached the same conclusion—that the mark was not inherently distinctive, holding (1) a color mark can never be inherently distinctive (whether on a product or its packaging), and (2) a color mark for packaging cannot be inherently distinctive without a defined peripheral shape or border.  Forney appeal to the Federal Circuit under 15 U.S.C. §1071(a)(1). 

The Federal Circuit held that the TTAB erred in both holdings.

First, the Federal Circuit held that the TTAB erred in holding that a color mark is incapable of being inherently distinctive.  The court relied on the following three Supreme Court trade dress decisions:

• Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), for the proposition that trade dress can be inherently distinctive. In Two Pesos, the Supreme Court assumed without deciding that the trade dress in that case—restaurant décor—was inherently distinctive. 
  
  
• Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), which implied but did not hold that secondary meaning may be required to protect color alone as a trade dress. The trade dress at issue in Qualitex was a unique shade of green used on dry-cleaning pads. 
  
  
• Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205 (2000), which considered the trade dress of garment design. While the Supreme Court in Samara Brothers—discussing a product design mark—held that “design like color, is not inherently distinctive”; it distinguished this form of trade dress from the restaurant décor in Two Pesos (which it found was more akin to product packaging), noting that “[t]he attribution of inherent distinctiveness to certain categories of . . . product packaging derives from the fact that the very purpose . . . of encasing [a product] in a distinctive packaging, is most often to identify the source of the product.” 

Based on this precedent, the Federal Circuit found that Forney’s multi-color product packaging mark was like the mark at issue in Two Pesos and “falls firmly within the category of marks the Court described as potential source identifiers.”  Given the proposed mark comprised a horizontal black bar with the color red fading to yellow, the Federal Circuit concluded that Forney’s mark could serve as a source of goods in that packaging and the TTAB should have evaluated the proposed mark for inherent distinctiveness.

Second, the Federal Circuit held that the TTAB erred in holding that a color mark for packaging may only be inherently distinctive when defined by a peripheral shape or border.  The court explained that to determine whether trade dress is inherently distinctive, the primary question is whether “the trade dress ‘makes such an impression on consumers that they will assume’ the trade dress is associated with a particular source.”  To answer this question, the court required the TTAB to consider the relevant Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977), factors including: “(1) whether the trade dress is a “common” basic shape or design; (2) whether it is unique or unusual in the particular field; and (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 or-namentation for the goods[.]”  Moreover, the Federal Circuit held that whether a packaging trade dress is a source indicator depends on the “overall impression created by both the colors employed and the pattern created by those colors.”  Having found that the proposed mark was not a mere color mark but also a “symbol,” the court vacated the TTAB’s decision and remanded for the TTAB to consider the distinctiveness of the proposed mark under the Seabrook factors.

The case is In re Forney Industries, Inc., No. 19-1073 (Fed. Cir. Apr. 8, 2020).