In general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.
Petitioner filed a case against respondent for infringement of its trademark. The district court ruled in petitioner’s favor. On appeal, however, the United States Court of Appeals for the Ninth Circuit ruled that the respondent did not infringe petitioner’s trademark. This was premised on a holding that a trademark could not be obtained for a color alone.
Is a color registrable as a trademark?
The court held that a color, to the extent it met the ordinary requirements to register a trademark, was registerable. The court also held a color could satisfy the part of the statutory definition of a trademark, which required a person to "use" or "intend to use" the mark to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source was unknown, 15 U.S.C.S. § 1127. The court held, however, that to the extent that a color was functional, the mark would have to be examined to determine if its use as a mark would permit one competitor to interfere with legitimate competition. Accordingly, the judgment that held petitioner could not register a color as a trademark was reversed.