The US Court of Appeals for the 10th Circuit, in affirming a district court ruling, reaffirmed the availability of trade dress protection for colors, but reiterated that a plaintiff must show that its color trade dress is inherently distinctive or has acquired secondary meaning to become distinctive. Forney Industries, Inc. v. Daco of Missouri, Inc., Case No. 15-1226 (10th Cir., Aug. 29, 2016) (Hartz, J).

Forney, a manufacturer of metalworking parts, sold numerous products for decades in packaging that contains a color combination of red, yellow, white and black. Forney sued Daco, dba KDAR, for infringement of its unregistered color trade dress. KDAR’s packages also included a color scheme of red, yellow, white and black in connection with a flame design. After the district court granted summary judgment to KDAR on the grounds that Forney had failed to show either inherent distinctiveness or acquired distinctiveness, Forney appealed.

The 10th Circuit agreed with the district court that Forney’s color mark was not described clearly enough to determine which particular trade dress features were being claimed as comprising the protected mark, and that Forney’s color scheme was not tied to any unique features such as a pattern, design or shape—the only way that a color mark can achieve inherent distinctiveness. The Court emphasized that even though the four colors were used for decades on Foley’s packaging, the layout and color arrangement had been so erratic over the years that the Court could not discern any identifiable pattern that could be ascertained as Foley’s trade dress. The Court queried whether Foley’s description of its mark in the pleadings “would [even] satisfy the articulation requirement for a protectable mark,” and concluded that Foley failed to establish inherent distinctiveness in its mark.

Forney did not provide direct survey evidence of acquired distinctiveness, and its indirect evidence fell short. Foley’s proof of continuous and exclusive use consisted mainly of a “conclusory” declaration by Forney’s CEO that the four colors had been used for 25 years on product packaging, that a large amount of advertising money had been spent and that sales revenues were “over half a billion dollars” during that time frame. However, Forney did not show the most critical element of evidence of acquired distinctiveness, which is a nexus between the color mark itself and the advertising/sales. Without this, there is no proof that consumers, upon seeing the packaging with those four colors, would identify it as originating from a single source. In addition, KDAR provided evidence of third-party packaging that used the same colors, so it was not even clear that Forney was the exclusive user of the claimed trade dress for its allegations to survive summary judgment.

Practice Note: To show inherent distinctiveness of a color mark, proprietors should try to link it to a unique pattern, shape or design. If that is not feasible, secondary meaning can be litigated using survey evidence or other evidence that shows that the color mark is recognized as a source of origin indicator or that the color(s) are touted in advertising by a single source as a source indicator.