Color Guard: Tips for Registering a Color as a Trademark with the USPTO

In a recent precedential opinion, the United States Patent and Trademark Office's (USPTO's) Trademark Trial and Appeal Board (TTAB) ruled that a trademark consisting of multiple colors, as applied to product packaging, cannot be inherently distinctive. See In re Forney Industries, Inc., Serial No. 86269096 (September 10, 2018). In this case, the Board confirmed that an applicant seeking registration of a multi-color mark must demonstrate that the mark has acquired distinctiveness, meaning that consumers associate the color(s) with that specific person or company as a result of the applicant's extensive use, marketing, sales, etc.

When most people think of trademarks, they imagine brand names such as Amazon, logos such as the McDonald's golden arches, or slogans such as JUST DO IT. However, a trademark can be nearly anything, so long as it is capable of identifying and distinguishing a particular person or company as the source of goods or services. As a result, it is increasingly common to see applications for "non-traditional" such as scents, sounds, specific colors, or even a type of movement.

The main impediment that many non-traditional marks face is demonstrating that the proposed mark is distinctive. Distinctiveness is a threshold requirement for any trademark registration. It is an abstract concept that essentially requires the trademark to be: (1) something consumers would view as a trademark (and not as a descriptive term or common design element); and (2) distinguishable from other trademarks. A mark can be inherently distinctive or it can acquire distinctiveness, where consumers come to view an otherwise descriptive or non-protectable term as a trademark because of its continuous and exclusive use by the owner.

To many, a "color trademark" refers to a mark that is not black and white, which could include a logo or simply a stylized word. The Forney case dealt with the other kind of "color trademark"—€”the kind where the color, or in this case colors, is the entire mark. Forney Industries Inc. is a leading manufacturer of welding and metalworking products. On May 1, 2014, it applied to register the following for a variety of goods in classes 6, 7, 9, 16, and 17:

Forney described the mark as "the colors red into yellow with a black banner located near the top as applied to packaging for the goods" (emphasis added). In other words, Foley claimed that the mark is not a rectangular logo, but that the colors that appear within that rectangle function as a trademark when they are applied to product packaging. On September 14, 2014, the USPTO issued an Office Action, finding (among other things) that the mark was a color mark because the particular shape of the product packaging was not claimed as part of the mark. The Examining Attorney referenced the fact that neither the drawing of the mark nor the description of the mark in the application identified the shape of the product packaging and pointed to the established principle that color(s) alone can never be "inherently distinctive" See Trademark Manual of Examining Procedure (TMEP) § 1202.05(a).

The Examining Attorney informed the Applicant its mark could be registered upon adequate proof of acquired distinctiveness, but rather than submitting adequate proof of acquired distinctiveness of the color mark, Forney instead focused on the argument that the mark should be treated as product packaging claiming multiple colors (as opposed to being a color mark) and that it should be registrable without proof of acquired distinctiveness. Forney also argued the technical point that the cases relied upon by the Examining Attorney only involved a single color, whereas this application featured multiple colors. The Examining Attorney was not persuaded, issuing a Final Office Action on May 14, 2015, which Forney appealed.

The Board agreed with the Examining Attorney, finding that "there is no distinction between color(s) applied to products and color(s) applied to product packaging" when it comes to the requirement of proving acquired distinctiveness. The Board dispatched with Forney's argument that the use of multiple colors (rather than a single color) was significant, stating: "A mark consisting of multiple colors without additional elements is still a '€˜color' mark, and thus cannot be inherently distinctive." Notably, the Board referenced a prior District Court case brought by Forney on this same issue (Forney Indus., Inc. v. Daco of Mo., Inc., 835 F.3d 1238 (10th Cir. 2016)); see also, In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (holding that although a "color applied to a product or its packaging may function as a trademark … color can never be inherently distinctive as a source indicator"). Ultimately, the Board concluded that a color mark (single or multiple) can be registered on the Principal Register only if: (1) the applicant demonstrates that the mark has acquired distinctiveness; or (2) the mark is confined to a distinctive, well-defined shape, such as a logo [i.e., it is not a pure "color mark"].

The ruling is not particularly surprising. It follows a line of cases holding that colors cannot be inherently distinctive trademarks. See e.g., Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) and Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). However, the ruling is instructive for companies that wish to seek registration of any nontraditional trademarks.

In particular, applicants who wish to register a color mark or any other nontraditional mark would be wise to take the time to develop evidence of acquired distinctiveness before submitting the application, and claim acquired distinctiveness when asked to do so by the Board. Evidence of distinctiveness includes sales data, widespread advertising, unsolicited media coverage, general public recognition for the mark, and "look for" advertising, where the company directs consumers to "look for the color” or other trade dress at issue. In this case, it appears Forney may have in fact had evidence of acquired distinctiveness with sales of over $500 million in products over the past 20 years. It had been using the mark for several decades and provided extensive marketing and sales data in its March 2015 Office Action Response, noting that the commercial success "also shows strong secondary meaning," but because Forney did not formally claim acquired distinctiveness and devoted its entire appeal brief to inherent distinctiveness, the Board did not address the issue. Had it done so, the result likely would have been much different.