9 April 2020TrademarksSarah Morgan

Fed Circ overturns TTAB in colour trade dress ruling

In a precedential ruling, the US Court of Appeals for the Federal Circuit has overturned a decision on the protection of colour under trademark law.

Yesterday, April 8, the Federal Circuit  vacated a Trademark Trial and Appeal Board (TTAB) decision that had rejected  Forney Industries’ attempt to register a colour trademark.

Case history

Forney, which sells accessories and tools for welding and machining, applied to register a colour mark in 2014, for packaging for various welding and machining goods. The trademark consists of the colours red merging into yellow with a black banner located near the top.

However, the examining attorney refused registration after finding that it wasn’t distinctive and, on appeal, the TTAB affirmed the rejection.

Relying on US Supreme Court case law, the TTAB concluded that, when assessing marks consisting of colour, there is no distinction between colours applied to products and colours applied to product packaging.

Turning to Forney’s mark, the board found there was no legal distinction between a mark consisting of one colour and a mark consisting of multiple colours, without additional elements such as shapes or designs.

“Contradicting its earlier finding that ‘a colour mark consisting of multiple colours applied to product packaging is not capable of being inherently distinctive’, the board then held that a colour mark consisting of colour applied to product packaging cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border,” said the Federal Circuit in its overview of the TTAB’s reasoning.

Forney appealed against the decision to the Federal Circuit.

The ruling

Siding with Forney, the Federal Circuit concluded that the board had erred by holding that a multi-colour mark can never be inherently distinctive and that product packaging marks that use colour cannot be inherently distinctive in the absence of a well-defined peripheral shape or border.

On the first point, the TTAB found that Supreme Court case law “make[s] clear that colour, whether used on a product or its packaging, can never be inherently distinctive”.

However, the Federal Circuit disagreed. “We do not believe that, to date, the Supreme Court has gone as far as the board did here, where the mark is proposed for product packaging, as distinct from product design,” said  Circuit Judge Kathleen O’Malley, on behalf of the court.

O’Malley added that colour marks can be inherently distinctive when used on product packaging, depending upon the character of the colour design.

“As the Supreme Court has made clear, inherent distinctiveness turns on whether consumers would be predisposed to ‘equate the [colour] feature with the source’,” she said.

According to the court, while it’s true that colour is usually perceived as ornamentation, a distinct colour-based product packaging mark can indicate the source of the goods to a consumer.

Forney’s proposed mark could possibly be perceived by consumers to suggest the source of the goods in that type of packaging, added O’Malley.

The judge concluded that instead of “blanketly holding” that colours alone cannot be inherently distinctive, the TTAB should have considered whether Forney’s mark satisfies this court’s criteria for inherent distinctiveness.

On the second point, the Federal Circuit said that the TTAB had found that a colour may only be inherently distinctive when used in conjunction with a distinctive peripheral shape or border, without explaining why it was doing so.

“While the US Patent and Trademark Office attempts to now characterise the board’s test as less demanding, that effort is belied by the result the board actually reached here,” said O’Malley.

She noted that either the TTAB’s judgment rests on its erroneous view that colour marks can never be inherently distinctive or on the erroneous requirement that a colour mark must be associated with a specific peripheral shape or border in order to be inherently distinctive.

“Nothing in the case law mandates such a rule,” concluded the court, before vacating and remanding the case for further proceedings.

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