COLOR AS TRADE DRESS-IS IT DISTINCTIVE? IS IT FUNCTIONAL?

How a product looks, the distinctive image that contributes to the appearance of the product (but not the function of the product), may be protected under Trade Dress law, a part of U.S. Trademark Law. The Lanham Act, 15 U.S.C. § 1125(a), gives protection for trade dress infringement under unfair competition laws. Trade Dress, protected as designs, colors, shapes, etc. That help to link the quality of a product to the source of the product’s distinguishing features marking the goodwill of the business and product.

Sunbeam Products, Inc. v. West Bend Co., 123 F. 3d 246, (US: Court of Appeals, 5th Circuit 1997), spells out how trade dress is protectable:

To demonstrate an unlawful trade dress infringement, the plaintiff must first establish that the trade dress qualifies for trade dress protection. This inquiry encompasses three issues: (1) distinctiveness, (2) secondary meaning, and (3) functionality [lack thereof].

If the court concludes that the trade dress is protected, the plaintiff must demonstrate that it has been infringed. "Infringement occurs only when there is a likelihood of confusion between the products of the plaintiff and the defendant." Blue Bell, 864 F.2d at 1256; accord Taco Cabana, 932 F.2d at 1118-19.

Those seeking protection for their product image through USPTO trademark registration must have a product configuration that is either inherently distinctive or has acquired a secondary meaning, and must be able to demonstrate that this distinctive product configuration is not functional. If a trade dress is functional, it does not merit protection, even if it is inherently distinctive or has acquired secondary meaning.

ACQUIRED DISTINCTIVENESS AND COLOR

• The burden of proving that a color mark has acquired distinctiveness is substantial.
• A mere statement of long use is not sufficient.
• The applicant must demonstrate that the color has acquired source-indicating significance in the minds of consumers.
• Over time, customers may come to treat a particular color on a product or its packaging as signifying a brand and to indicating their source, the color may develop a commercial impression.

TMEP 1202.05 Color as a Mark

(from Trademark Manual of Examining Procedure (TMEP) - 6th Edition)

Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, the color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package. See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995) (green-gold used on dry cleaning press pads held to be a protectible trademark, where the color had acquired secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired secondary meaning). Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.

The registrability of a color mark depends on the manner in which the proposed mark is used. Owens-Corning, 774 F.2d at 1120, 227 USPQ at 419. A color(s) takes on the characteristics of the object or surface to which it is applied, and the commercial impression of a color will change accordingly. See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (“a word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances”).

Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000). See TMEP § 1202.05(a) and cases cited therein.

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. Owens-Corning, 774 F.2d at 1124, 227 USPQ at 422; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) (“blue motif” used in retail stores would likely be perceived by prospective purchasers as “nothing more than interior decoration” that “could be found in any number of retail establishments. Undoubtedly such features are usually perceived as interior decoration or ornamentation.”) However, color can function as a mark if it is used in the manner of a trademark/service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. The United States Supreme Court has held that color alone may, sometimes, meet the basic legal requirements for a trademark. When it does, there is no rule that prevents color from serving as a mark. Qualitex, 514 U.S. at 161, 34 USPQ2d at 1162. If a color is not functional and is shown to have acquired distinctiveness on or in connection with the applicant’s goods or services, it is registrable as a mark.

* * *

TMEP 1202.05(b) Functional Color Marks Not Registrable

(from Trademark Manual of Examining Procedure (TMEP) - 6th Edition)

A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if the color is functional. Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1447 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that opposer had established a prima facie case that coated abrasive manufacturers have a competitive need to be able to use various shades of purple, include applicant’s shade, which applicant had failed to rebut; and that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”); Brunswick Corp. v. British Seagull, supra (holding the color black functional for outboard motors because while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (color pink used on surgical wound dressings is functional because the actual color of the goods closely resembles Caucasian human skin); In re Orange Communications, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow and orange held to be functional for public telephones and telephone booths, since they are more visible under all lighting conditions in the event of an emergency); In re Howard S. Leight & Associates Inc., 39 USPQ2d 1058 (TTAB 1996) (color coral held to be functional for earplugs, because it is more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process.

See also In re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functional); R.L. Winston Rod Co. v. Sage Mfg. Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D. Mont. 1993) (color green used on graphite fishing rods found to be functional); Russell Harrington Cutlery Inc. v. Zivi Hercules Inc., 25 USPQ2d 1965 (D. Mass. 1992) (color white used on cutlery handles found to be functional); Kasco Corp. v. Southern Saw Service Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade).

The doctrine of “aesthetic functionality” may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely “utilitarian” in nature, nevertheless dictate that the color remains in the public domain. Brunswick Corp. v. British Seagull, supra. See also TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (in which the Supreme Court discussed aesthetic functionality, distinguishing Qualitex, supra, as a case where “aesthetic functionality was the central question…”). See TMEP §1202.02(a)(vi).

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EXAMPLES OF A COLOR REFUSALS-COLORS CAN BE REJECTED FOR BEING ORNAMENTAL OR FUNCTIONAL

(part of actual refusals with some information redacted)

COLOR MARKS ARE NEVER INHERENTLY DISTINCTIVE

Registration is refused because the proposed color mark, consisting of colors applied to the goods, is merely an ornamental or decorative feature of such goods; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate their source. Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127; In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985); In re Star Pharms., Inc., 225 USPQ 209 (TTAB 1985); TMEP §§1202.05 and 1202.05(a). Applicant’s mark consists of a blue XXXXXX design as applied to plastic films, textiles, clothing and other related goods. Please see the attachments which show widespread ornamental use of similar XXXXXX designs on goods of the applicant’s kind.

______________________________________________________________________

REFUSAL – FUNCTIONAL DESIGN FOR GOODS – MAINTAINED AND CONTINUED Registration was refused because the applied-for mark appears to be a functional design for such goods. Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)-(a)(ii). This refusal is maintained and continued. A feature is functional if it is “essential to the use or purpose of the [product]” or “it affects the cost or quality of the [product].” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); TMEP §1202.02(a)(iii)(A). A feature of the mark may be found to be functional if it provides real and significant competitive advantages and thus should remain in the public domain. See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995); TMEP § 1202.02(a)(vi).

The mark at issue provides a number of important competitive advantages. Applicant’s website states that the product featuring the proposed mark “increases your visibility to other hunters while you remain inconspicuous to animals such as antelope, deer and buck.” (See attached homepage from applicant’s website.) The design of the mark is intended to make the user inconspicuous to wildlife, while the color blue is used to make the user more visible to humans. (See attached homepage from applicant’s website.)

The existence of other marks on the Register featuring a XXXXX design is not persuasive. Each case must be decided on its own merits. The determination of functionality must be made in light of the evidence available for use of the mark on the goods specified in this application.

Because the color and design features of the mark provide significant competitive advantages, the mark is a functional design for the goods and the refusal to register must be maintained and continued.

INFORMATION REQUIRED Applicant must provide the following information and documentation regarding the applied-for mark:

(1) A written statement as to whether the applied-for mark is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.;

(2) Advertising, promotional and/or explanatory materials concerning the applied-for mark, particularly materials specifically related to the design features embodied in the applied-for mark.;

(3) A written explanation and any evidence as to whether there are alternative designs available for the features embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.; and

(4) Any other evidence that applicant considers relevant to the registrability of the applied-for mark.

See 37 C.F.R. §2.61(b); In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 1340-41, 213 USPQ 9, 15-16 (C.C.P.A. 1982); TMEP §§1202.02(a)(v) et seq. With regard to this requirement for information, the Trademark Trial and Appeal Board and its appeals court have recognized that the necessary technical information for ex parte determinations regarding functionality is usually more readily available to an applicant, and thus the applicant will normally be the source of much of the evidence in these cases. In re Teledyne Indus. Inc., 696 F.2d 968, 971, 217 USPQ 9, 11 (Fed. Cir. 1982); see In re Babies Beat Inc., 13 USPQ2d 1729, 1731 (TTAB 1990) (holding registration was properly refused where applicant failed to comply with trademark examining attorney’s request for copies of patent applications and other patent information); TMEP §1202.02(a)(v).

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FUNCTIONALITY

Registration is refused because the applied-for mark, which consists of a blue XXXXXX-like pattern as applied to the surface of the goods, appears to be a functional design for such goods. Trademark Act Section 2(e)(5), 15 U.S.C. §1052(e)(5); see TMEP §1202.02(a)(vi). TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-64 (1995); TMEP §1202.02(a)(iii)(A).

Applicant’s mark consists of a design pattern that enhances the attractiveness of the goods to the point where it provides “real and significant competitive advantages and thus should remain in the public domain.” See Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163-1164 (1995) (stating that a product color might be considered functional if its exclusive use “would put competitors at a significant non-reputation-related disadvantage,” even where the color was not functional in the utilitarian sense). TMEP Section 1202.02(a)(vi).

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Function as a Mark Use of Subject Matter Trademark TMEP 1202-1202.02 Trademark Subject Matter TMEP 1202.03-1202.16 Service Marks TMEP 1301 15 USC 1051, 1052, 1053 etc Valid/Invalid Use Color as Trade Dress Does Not Function Refusals 3D Trademarks (Trade Dress) Acceptable Specimen Grounds for Opposition What to Expect

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