In the past, in order for a brand owner to protect color as a feature of its product packaging, it had to show that the color scheme had acquired distinctiveness through extensive use in the marketplace. This was often a difficult and potentially expensive hurdle requiring a significant evidentiary showing to the Trademark Office. However, last week, the Court of Appeals for the Federal Circuit (Fed Circuit) ruled otherwise – creating new possibilities for brand owners to protect the overall look and feel of their packaging and strengthen their intellectual property tool kit.
In In re Forney Industries, Inc., Forney Industries sought a trademark application for 
as used on packaging for various welding and machining goods. The mark is described as follows: "the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card" (SN: 86/269096). The Examining Attorney refused registration on the grounds that it lacked inherent distinctiveness. Relying on Supreme Court precedent, the Trademark Trial and Appeal Board (Board) affirmed the Trademark Office's refusal to register the mark, finding that "when assessing marks consisting of color, there is no distinction between colors applied to products and colors applied to product packaging." The Board further noted that color applied to a product may serve as a trademark, but only upon showing of secondary meaning – in other words, color marks alone cannot be inherently distinctive.
However, in its April 8 ruling, the Fed Circuit concluded that the Board erred in ruling that a color mark applied to product packaging cannot be inherently distinctive.
In coming to its conclusion, the court focused its decision on distinguishing between color claimed as a feature of a product and color claimed as a feature of product packaging. Specifically, the court determined that "a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive." The court reasoned that in the leading case involving the registrability of color marks, Qualitex v. Jacobson, the Supreme Court merely implied that a showing of secondary meaning may be required before a color mark alone can be protectable, and that the Court "did not expressly so hold." The court went on to apply the decision in Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (a case argued and won by Venable's own intellectual property attorneys), to focus on the differences in how consumers perceive product design as opposed to product packaging as a source identifier – ultimately concluding that color on product packaging can be inherently distinctive.
Because a Federal Circuit ruling controls the way the Trademark Office will view color marks going forward, this decision by the Federal Circuit changes the registrability analysis for color marks. In other words, this decision not only provides trademark practitioners with a topic for academic discussion, but, more importantly, with a blueprint to help our clients register color marks without having to show secondary meaning.
In view of the changing legal landscape on this topic, we'll continue to monitor the Trademark Office's records, and specifically how it handles color-mark trademark applications going forward. In the meantime, brand owners, especially those battling counterfeit goods, should consider pursuing federal trademark registration for the color scheme of their packaging to help strengthen their brand protection.