‘Unbinding’ precedent: TM protection for packaging colour schemes now more attainable
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.
The US Court of Appeals for the Federal Circuit’s ruling in In Re: Forney rejected the Trademark Trial and Appeal Board’s (TTAB’s) conclusion that colour marks for product packaging were incapable of inherent distinctiveness.
In reversing and remanding the decision, the Federal Circuit held that colour packaging marks that otherwise meet the traditional requirements for inherent distinctiveness are protectable and registrable.
Located in Fort Collins, Colorado, Forney Industries offers a wide array of tools and accessories used primarily in welding and metalworking, such as compression springs, circular saw and hacksaw blades, outdoor hearing protection devices, propane torches, soapstone pencils, and caution tape.
Forney sells its products through hardware stores, farm and ranch supply stores, and automotive supply stores. Since Forney’s product line varies in size and shape, there is no uniform size or shape for its packaging. Many of its products are packaged on “backer cards” and then encased in a plastic covering and displayed at retail locations hanging from pegboards.
Forney’s backer cards and other packaging display a solid black stripe at the top, with a yellow stripe underneath, which fades into the colour red (pictured below).
