In Re FORNEY INDUSTRIES, INC.

Before Dyk, O’Malley, and Chen. Appeal from the Trademark Trial and Appeal Board.

Summary: Multi-colored marks may be inherently distinctive when used on product packaging.

Forney filed a Trademark Application for a proposed mark for packaging for welding and machining goods. Forney identified the proposed mark as a color mark, containing the colors black, yellow, and red, arranged in a fading pattern, as seen below:

The examining attorney refused the registration, stating that such marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness. The Board affirmed the examining attorney’s refusal to register, concluding that a particular color on a product or its packaging can never be inherently distinctive and may only be registered on a showing of acquired distinctiveness. The Board also alternatively found that a color mark consisting of color applied to product packaging cannot be inherently distinctive in the absence of an association with a well defined peripheral shape or border.

The Federal Circuit vacated the Board’s holdings, and remanded for further proceedings, finding that the Board erred both in holding that a multi-colored mark can never be inherently distinctive, and in holding that product packaging marks that employ color cannot be inherently distinctive in the absence of a well defined shape or border. The Federal Circuit disagreed with the Board’s conclusion that Supreme Court precedent, including Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995), precluded a finding that a multi-color product packaging mark can be inherently distinctive, and concluded that the Board should have considered whether the mark at issue satisfies the Federal Circuit’s criteria for inherent distinctiveness. The Federal Circuit also found that nothing in the existing case law requires a color mark to be associated with a specific shape or border in order to be inherently distinctive.

Editor: Paul Stewart

Written by: Ashley C. Morales & Karen Cassidy