Brunswick Corp. v. British Seagull Ltd. - 35 F.3d 1527 (Fed. Cir. 1994)

Rule:

Like any other mark, the use of color, if functional, cannot serve as a trademark. When the color applied to goods serves a primarily utilitarian purpose it is not subject to protection as a trademark.

Facts:

Appellant, manufacturer of black outboard motors, applied to the Patent and Trademark Office's Trademark Trial and Appeal Board (Board) to register the color black as a mark for appellant's outboard motors under 15 U.S.C.S. 1052(f). The Board determined that the color black was de jure functional, and appellant failed to establish secondary meaning, nor was the exclusive produce of black outboard motors. Appellant challenged the decision of the Board. 

Issue:

Under the circumstances, was the color black de jure functional? 

Answer:

Yes.

Conclusion:

The court determined that a color could serve as a trademark as long as it did not serve a primarily utilitarian purpose, and the test of whether a product was de jure functional or de facto functional was a question of fact reviewed for clear error. The court affirmed and held that the color black was de jure functional, since the color did not improve the motor's function, but established compatibility to boat colors, thereby making it an aesthetic characteristic and establishing a competitive need.