Tenth Circuit: Color + Pattern = Trademark Protection

In the context of product packaging, color can only be distinctive for trademark purposes when combined with a shape, pattern, or design, the Tenth Circuit U.S. Court of Appeals has ruled when holding that on its own, a color scheme is not "inherently distinctive" enough for legal protection.

The dispute involved the packaging for Forney Industries' metalworking parts and accessories, which has used some combination of red, yellow, black, and white coloration since at least 1989. Forney described the mark it sought to protect as follows:

"The Forney Color Mark is a combination and arrangement of colors defined by a red into yellow background with a black banner/header that includes white letters. More specifically, the Forney Color Mark includes red and yellow as the dominate [sic] background colors. Red typically starts at the bottom of the packaging, continues up the packaging and may form borders. Red may also be used in accents including but not limited to lettering. Yellow typically begins higher than the red and continues up the packaging. Yellow may also provide borders and be used in accents including but not limited to lettering. A black banner is positioned toward the top of the package label or backer card. Black may also be used in accents including but not limited to lettering. White is used in lettering and accents."

Forney filed suit against competitor Daco of Missouri, alleging the defendant infringed on its protected mark by packaging its line of metalworking parts with similar colors and a flame motif. A district court granted summary judgment to Daco and the Tenth Circuit affirmed.

"Forney's use of color, which was not associated with any particular shape, pattern, or design, was not adequately defined to be inherently distinctive, and Forney failed to produce sufficient evidence that its use of color in its line of products had acquired secondary meaning (that is, that the relevant public understood those colors to identify Forney as the source)," the three-judge panel wrote.

Reviewing the Lanham Act's protection for trade dress, the court noted that the law relating to whether a trademark is inherently distinctive is more developed for word marks than trade dress, although the courts were once split on whether trade dress could ever be inherently distinctive.

That split was resolved by the U.S. Supreme Court in 1992 in Two Pesos, Inc. v. Taco Cabana, Inc., when the Justices held that a product's trade dress, like other forms of trademark, could be protected under the Lanham Act by showing that it was inherently distinctive.

However, courts have struggled in the ensuing decades to come up with an appropriate test, particularly since the Court ruled that a product's color cannot be inherently distinctive. Given these parameters, the Tenth Circuit determined 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."

Applying this standard to Forney's product packaging, the court questioned whether the description provided by the company would satisfy the requirement for a protectable mark. "Forney's description is too vague," the panel wrote. "For example, Forney says that the yellow 'typically' begins higher than red. Lettering and accents 'may' be red, yellow, white, or black. This failure in the description cannot be blamed on any shortcoming in counsel's power of expression. It is probably the best that one could do, given the variety of packaging that Forney has used on its products over the years."

Forney used the color combination "in such diverse ways that there is no consistent shape, pattern, or design we can discern from its description of its mark or from the examples it provides," the court concluded.

The plaintiff, relying on an affidavit from the Forney CEO who listed the company's promotional and advertising efforts over the last 25 years and its half a billion dollars in sales, similarly failed to convince the panel that its trade dress had developed secondary meaning.

While agreeing that advertising "can be strongly probative" of secondary meaning, the court said Forney's was not directed at highlighting the trade dress. As for the sales figures, the company failed to indicate how the sales related to the color mark.

To read the decision in Forney Industries, Inc. v. Daco of Missouri, Inc., click here.

Why it matters: The Tenth Circuit emphasized that trademark protection is available for color when used in association with a particular shape, pattern, or design. But Forney failed to demonstrate that it used the specified colors in such a manner, facing particular trouble as its packaging changed significantly over the more than 20 years at issue. Given the changes, how "is a consumer supposed to have come to associate the packaging with Forney?" the panel asked, affirming summary judgment for the defendant.

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