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Federal Circuit Holds that Multiple Colors on Product Packaging Can Be a Trademark without Evidence of Acquired Distinctiveness
Setting up a possible showdown at the Supreme Court, the U.S. Court of Appeals for the Federal Circuit recently ruled on a matter of first impression: whether a mark on product packaging consisting of multiple colors unbound by any peripheral shape can be considered inherently distinctive and therefore registered without evidence that it has acquired distinctiveness (i.e., secondary meaning as an indicator of the source of the product). The Federal Circuit’s decision, in holding that such marks can be inherently distinctive, draws conceptual distinctions between product design and product packaging, and clarifies that a well-defined shape is not a necessary requirement of a color mark. This decision broadens the types of product packaging marks that may be protectable without a showing of acquired represents an important development in the case law regarding color marks. As the ruling squarely contradicts the Tenth Circuit’s 2016 decision in , the case eventually may end up before the Supreme Court.
In In re Forney Industries, Inc., Forney Industries, Inc. (“Forney”) appealed a refusal to register its mark consisting of “the colors red into yellow with a black banner located near the top.” The color mark, the drawing for which is depicted below (the broken lines indicate that the mark is not tied to any particular peripheral shape), is applied to the product packaging, specifically the backer card, for Forney’s wide range of hardware and tools.
In 2016, the Examiner at the United States Patent and Trademark Office (USPTO) issued a final refusal to register Forney’s mark on the Principal Register on the grounds that the mark was not inherently distinctive and no evidence of secondary meaning had been submitted. The Examiner’s argument relied on a line of Supreme Court decisions regarding trade dress and color marks—Two Pesos, Qualitex Co., and Wal-Mart—as well as their interpretation in decisions by the Trademark Trial and Appeal Board (TTAB) and the Federal Circuit. A mark such as Forney’s, the Examiner argued, consists of a color mark applied to product packaging rather than the product packaging itself (which could be considered trade dress). Based on the USPTO’s interpretation of Supreme Court and Federal Circuit precedent, marks consisting solely of color can never be inherently distinctive. The Examiner concluded that color marks applied to packaging are registrable on the Principal Register only with proof of acquired distinctiveness.
Forney appealed to the TTAB, which affirmed the refusal in 2018. The TTAB’s precedential decision stated that it would be inappropriate to assess Forney’s mark as product packaging trade dress because the mark itself does not claim a particular shape or uniform application to packaging. Forney’s specimens of use showed that its mark was applied to different shapes and sizes of packaging depending on the type of product sold. Rather, Forney’s mark was a color mark, albeit one consisting of multiple colors. The TTAB relied heavily on two previous cases involving single color marks applied to products, Qualitex (green-gold color applied to dry cleaning press pads) and Owens-Corning (pink color applied to fiberglass), as well as a Tenth Circuit decision involving Forney’s own mark, Forney v. Daco. In the latter case, the Tenth Circuit examined Supreme Court precedent to extrapolate that “the use of color in product packaging can be inherently distinctive (so that it is unnecessary to show secondary meaning) only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design.” The TTAB agreed with the Tenth Circuit stating that, as a legal matter, there is no distinction between a mark consisting of a single color and one consisting of multiple colors, and that a multi-color mark without a well-defined shape as applied to product packaging cannot be distinctive. Because Forney had not argued or submitted evidence that its mark had acquired distinctiveness, the TTAB upheld the refusal.
The Federal Circuit’s Decision
The Federal Circuit reversed the TTAB’s decision, finding two errors in the TTAB’s reasoning. First, the Federal Circuit disagreed with the TTAB’s interpretation of Supreme Court precedent regarding color marks. The TTAB interpreted cases involving the use of color in product design, which cannot be inherently distinctive, to also mean that color used in product packaging also cannot be inherently distinctive. Relying on the Supreme Court’s language in Wal-Mart (“with respect to at least one category of mark—colors—we have held that no mark can ever be inherently distinctive” and “design, like color, is not inherently distinctive”), the Federal Circuit found that while product design trade dress can never be inherently distinctive, product packaging trade dress can be. The Federal Circuit found that the Supreme Court’s decision in Two Pesos, regarding trade dress consisting of restaurant décor that was inherently distinctive, was a better guide for the issue at hand.
Second, the Federal Circuit overturned the TTAB’s ruling that color marks applied to product packaging cannot be inherently distinctive when such marks do not have an association with a well-defined peripheral shape or border. The Federal Circuit confirmed that the test to be applied in assessing inherent distinctiveness of trade dress, including the product packaging at issue in this case, is the Seabrook test:
(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 TTAB’s requirement of a peripheral shape was inconsistent with Seabrook and in error. The Federal Circuit reversed. The TTAB must now re-assess the registrability of Forney’s mark under the Seabrook factors.
Impact on Trademark Owners
The Federal Circuit’s holding is a positive step for brand owners using distinctive combinations of colors on their product packaging that have not yet achieved the marketplace recognition required to establish acquired distinctiveness. The Forney decision suggests that protection of such marks, even without the presence of additional wording, design elements, or a distinctive shape, is possible provided that the mark meets the Seabrook test for inherent distinctiveness. Notably, a color mark, such as the Forney mark, can be used to create a unified brand identity across a selection of products that may not have the same packaging shape. Forney opens the door for a single trademark registration to cover multiple applications of a multi-color mark to a diverse range of products so long as the color combination itself is inherently distinctive as used in connection with the products.
Forney does not foreclose the possibility that a single color mark on product packaging could be inherently distinctive, although the analysis in Forney specifically took into account the fact that the mark was a combination of a color gradient with a black bar. The inquiry will focus on the “character of the color design,” so the bar for protection for simpler or single color marks without a showing of acquired distinctiveness may be impossibly high.
Moving forward, Forney will be a case to watch. While it relies heavily on Supreme Court precedent in the areas of trade dress and color marks, the differing conclusions reached by the TTAB and the Tenth Circuit, on one hand, and Federal Circuit, on the other, invites Supreme Court review. In addition to the question of whether the same standard should be applied to color on product packaging as is applied to color on product shape or design, there remains a question as to whether there should be a distinction drawn between single color marks and multi-color marks. On remand, it will also be interesting to see whether the application of the more favorable Seabrook factors changes the TTAB’s initial conclusion that Forney’s mark is ineligible for registration on the Principal Register.
 In re Forney Industries, Inc., 955 F. 3d 940 (Fed. Cir. 2020).
 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).
 In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985).
 Forney Indus., Inc. v. Daco of Mo., Inc., 120 USPQ2d 1035 (10th Cir. 2016).
 In re Forney, 120 USPQ2d at 1040.
 In re Forney, Serial No. 86269096 at 14.
 Id. at 16.
 In re Forney, 955 F. 3d at 946-47.
 Id. at 947, citing Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977).
 In re Forney, 955 F. 3d at 948.
 The Federal Circuit’s opinion distinguishes Forney’s multi-color product packaging mark from the facts of Qualitex, which held that “with respect to at least one category of mark—colors—we have held that no mark can ever be inherently distinctive.” Qualitex, 514 U.S. at 162-63. However, the Federal Circuit also states that “Supreme Court precedent simply does not support the Board’s conclusion that a product packaging mark based on color can never be inherently distinctive.” In re Forney, 955 F. 3d at 947.
Hannah Lutz is an intellectual property attorney at Lathrop GPM LLP who focuses her practice on trademark and copyright matters. She earned her law degree from Columbia Law School. She would like to thank Sheldon Klein for his comments and guidance in writing this article.