‘Unbinding’ precedent: TM protection for packaging colour schemes now more attainable

In early April, the US Court of Appeals for the Federal Circuit handed a small but significant victory to trademark owners in a case involving colour marks for product packaging. Andrea Anderson of Holland & Hart reports.

A “double bind” is an apt way to describe the challenges faced by brand owners seeking to establish rights in the colour scheme of their packaging when launching a new product. For the most part, the US Patent and Trademark Office (USPTO) has refused to register such asserted marks absent a showing of acquired distinctiveness (sometimes called “secondary meaning”).

However, brand owners can’t establish acquired distinctiveness until after their product becomes commercially successful and well-recognised. And by that time, the packaging colour scheme may have been so copied and knocked-off that the brand owner cannot establish the “substantially exclusive use” also necessary for acquired distinctiveness. 

As a practical matter, this “double bind” has precluded federal trademark registration for many packaging colour marks—until now.