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In re Forney Indus.

United States Court of Appeals for the Federal Circuit

April 8, 2020, Decided



O'Malley, Circuit Judge.

Forney Industries, Inc. ("Forney") appeals from a decision of the Trademark Trial and Appeal Board ("the Board") which affirmed the trademark examining attorney's refusal to register Forney's proposed mark on grounds that the proposed mark is of a type that can never be inherently distinctive. In Re Forney Indus., Inc., 2018 TTAB LEXIS 322, 2018 WL 4348337 (T.T.A.B. Sept. 10, 2018) ("Board Op."). Because the Board erred by holding that: (1) a multi-color mark can never be inherently distinctive, and (2) product packaging marks that employ color cannot be inherently distinctive in the absence of a well-defined peripheral shape or border, we vacate and remand for further proceedings.

I. Background

Forney sells accessories [*2]  and tools for welding and machining in packaging that displays its proposed mark, shown below:

On May 1, 2014, Forney filed Trademark Application No. 86/269,096 for its proposed mark for packaging for various welding and machining goods based on use in commerce under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). Forney sought to register the mark without showing acquired distinctiveness. In its application, Forney identified its mark as a "color mark" and, as to the colors claimed, noted that "[t]he colors black, yellow and red is/are claimed as a feature of the mark." Joint Appendix ("J.A.") 23. Forney described its mark as follows: "[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels." Id.

In an Office Action dated September 16, 2014, the examining attorney refused registration under Sections 1, 2, and 45 of the Lanham Act because the mark "is not inherently distinctive." Id. at 39. The examining attorney noted that "[s]uch marks are registrable only on the Supplemental Register or on the Principal Register with sufficient proof of acquired distinctiveness." Id. The examining attorney requested, [*3]  inter alia, a revised drawing depicting a single three-dimensional view of the goods or packaging showing those features that Forney claimed as its mark, and a revised color claim and mark description. Id. at 40-41. The Office Action also noted that the colors in Forney's submitted drawing differ from those in the color claim and mark description, noting that Forney's submitted drawing shows the color orange but the description omits reference to that color. Id. at 41.

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2020 U.S. App. LEXIS 11006 *; 955 F.3d 940; 2020 U.S.P.Q.2D (BNA) 10310


Prior History:  [*1] Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 86/269,096.

In re Forney Indus., 2018 TTAB LEXIS 322 (Trademark Trial & App. Bd., Sept. 10, 2018)



color, packaging, trade dress, marks, trademark, consisting, Register, peripheral, border, product design, multi-color, registrable, consumers, yellow, red

Administrative Law, Judicial Review, Standards of Review, Substantial Evidence, Trademark Law, Subject Matter of Trademarks, Terms With Inherent Distinctiveness, Eligibility for Trademark Protection, Distinctiveness, Distinctiveness, Evidence of Distinctiveness, Labels, Packaging & Trade Dress, Evidence of Secondary Meaning