In re Forney Indus. - 955 F.3d 940 (Fed. Cir. 2020)

Rule:

Color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design. Inherent distinctiveness turns on whether consumers would be predisposed to equate the color feature with the source. While it is true that color is usually perceived as ornamentation, a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.

Facts:

Appellant Forney Industries, Inc. 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 the colors black, yellow and red was/were claimed as a feature of the mark. The examining attorney refused to register Forney’s proposed mark on grounds that the proposed mark was of a type that can never be inherently distinctive. The Trademark Trial and Appeal Board affirmed. 

Issue:

Was it not possible for a color-based trade dress mark to be inherently distinctive?

Answer:

No.

Conclusion:

The Trademark Trial and Appeal Board erred by concluding that a color-based trade dress mark could never be inherently distinctive without differentiating between product design and product packaging marks as color marks could be inherently distinctive when used on a product packaging, depending upon the characters of the color design. According to the court, the applicant's multi-color product packaging mark fell firmly within the category of marks judicial precedent described as potential source identifiers, and thus, the Board should have considered whether the mark satisfied the criteria for inherent distinctiveness. The alternative conclusion that a color could only be inherently distinctive when used in conjunction with a distinctive peripheral shape or border did not comport with case law as nothing in case law mandated such a rule. Accordingly, the Board’s decision was vacated and the case was remanded.