On April 8, 2020, a three-judge panel of the U.S. Court of Appeals for the Federal Circuit (“CAFC”) in In re: Forney Industries, Inc., Case No. 19-1073 (Fed. Cir. April 8, 2020) vacated and remanded for further proceedings a 2018 Trademark Trial and Appeal Board (“TTAB”) decision that had prevented Forney Industries, Inc. (“Forney”) from registering a black, yellow and red design on its product packaging as inherently distinctive trade dress (depicted below). In doing so, the CAFC noted that neither the Supreme Court, nor the CAFC, had directly addressed whether multi-color product packaging trade dress can be inherently distinctive, and held that trade dress in the form of colors applied to product packaging can indeed be inherently distinctive depending upon the specifics of the color design.
(dotted line shows placement of the trade dress design on packaging)
Trade dress is considered a “symbol” or “device” by which an entity’s goods can be distinguished from the goods of others, and “involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” In re: Forney Industries, Inc., at *5. Trade dress is protectable and registrable if it is inherently distinctive, i.e. its “intrinsic nature serves to identify a particular source of a product”, or if it acquires distinctiveness, i.e. it “become[s] distinctive of the applicant’s goods in commerce.” Id. at *6.
Forney sold accessories and tools for welding and machining in product packaging that displays the above-depicted trade dress. In 2014, it sought to register that product packaging trade dress, identifying the trade dress as consisting of “the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” However, the examining trademark attorney refused registration of the mark on the grounds that the applied for trade dress was not inherently distinctive, and required Forney to either amend the application to the Supplemental Register, or provide sufficient evidence of acquired distinctiveness.
The TTAB agreed with the examining trademark attorney, noting that the mark was a color mark consisting of multiple colors applied to product packaging, and therefore was not inherently distinctive. The TTAB relied on three (3) Supreme Court cases, Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) to reach the conclusion that, when assessing marks consisting of color, there is no difference between color marks applied to products versus color marks applied to product packaging, and that a color mark, whether applied to a product or its packaging, can never be inherently distinctive. However, the TTAB then backtracked by stating (or alternatively decided) that a color mark consisting of color applied to product packaging cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border. Forney appealed to the CAFC.
The CAFC determined that the TTAB erred (1) by holding “that a color-based trade dress mark can never be inherently distinctive without differentiating between product design and product packaging marks; and (2) by concluding that “product packaging marks that employ color cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border.” Id. at *6.
As to the first error, the CAFC explained that to date, the Supreme Court has not gone so far as to deny inherent distinctiveness to both product designs and product packaging. In Two Pesos, the Supreme Court held that inherently distinctive trade dress is entitled to protection without a showing of secondary meaning. 505 U.S. at 776. In Qualitex, where protection for a single shade of green-gold color on a dry-cleaning pad (i.e. product design trade dress) was at issue, the Supreme Court held that “there is no rule absolutely barring the use of color alone” as a trade dress, and found no “obvious theoretical objection to the use of color alone as a trademark, where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand, that is to indicate its ‘source.’” 514 U.S. at 161-63. Although Qualitex implied that acquired distinctiveness may be required before a color trade dress mark can be protected, it did not expressly hold this. In Wal-Mart, the Supreme Court actually differentiated between the two types of proposed trade dress – product design, and product packaging. As to product design trade dress, the Supreme Court held that it could never be inherently distinctive, explaining that “product design invariably services purposes other than source identification.” 529 U.S. at 211-13. As to the product packaging trade dress, the Supreme Court explained that such trade dress is normally “taken by the consumer to indicate origin”, and the inherent distinctiveness of product packaging trade dress “derives from the fact that the very purpose of . . . encasing [a product] in a distinctive packag[e]” is to “identify the source of the product.” Id. at 212
Using the framework of those three (3) Supreme Court cases, the CAFC explained that color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design, and noted the 10th Circuit had come to the same conclusion in Forney Industries, Inc. v. Daco of Missouri, Inc., 835 F.3d 1238, 1248 (10th Cir. 2016). The TTAB therefore should have considered whether the applied for color product packaging trade dress satisfied the inherent distinctiveness criteria for trade dress, including “(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 from a particular class of goods viewed by the public as a dress or ornamentation for the goods; or, inapplicable here, (4) whether it is capable of creating a commercial impression distinct from the accompanying words.” In re Forney, Inc., at * 10.
As to the second error, the CAFC held that there is simply no case law to support the TTAB’s finding that color product packaging trade dress can only be inherently distinctive when used in conjunction with a distinctive peripheral shape or border. Id. at *10.
Accordingly, the CAFC vacated the Board’s decision, and remanded the case for further proceedings consistent with its findings.
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