Rebecca Liebowitz Renato Perez September 14 2020 Pigment of our imagination? Colour trademarks could be inherently distinctive Venable LLP | Intellectual Property - USA Rebecca Liebowitz, Renato Perez Intellectual Property IntroductionFactsDecisionIntroductionPreviously, in order for a brand owner to protect colour as a feature of its product packaging, it had to show that the colour scheme had acquired distinctiveness through extensive use in the marketplace. This was often a difficult and expensive hurdle requiring a significant evidentiary showing to the United States Patent and Trademark Office (USPTO). However, in April 2020 the Court of Appeals for the Federal Circuit (Federal Circuit) ruled otherwise, creating new possibilities for brand owners to protect the overall look and feel of their packaging and strengthen their IP toolkit.FactsIn In re Forney Industries, Inc, Forney Industries filed a trademark application for the following mark.The mark was used on packaging for various welding and machining goods and was described as follows: "the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card" (SN 86/269096). The examining attorney refused registration on the grounds that the mark lacked inherent distinctiveness. Relying on Supreme Court precedent, the Trademark Trial and Appeal Board (TTAB) affirmed the USPTO's refusal to register the mark, finding that "when assessing marks consisting of color, there is no distinction between colors applied to products and colors applied to product packaging". The TTAB further noted that colour applied to a product may serve as a trademark only upon the showing of secondary meaning – in other words, colour marks alone cannot be inherently distinctive.However, in its 8 April 2020 ruling, the Federal Circuit concluded that the TTAB had erred in ruling that a colour mark applied to product packaging cannot be inherently distinctive.DecisionIn coming to its conclusion, the Federal Circuit focused its decision on distinguishing between colour claimed as a feature of a product and colour claimed as a feature of product packaging. Specifically, the court determined that "a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive". The court reasoned that in the leading case law involving colour marks' registrability (Qualitex v Jacobson), the Supreme Court had merely implied that a showing of secondary meaning may be required before a colour mark alone can be protectable and "did not expressly so hold". The court went on to apply the decision in Wal-Mart Stores, Inc v Samara Brothers, Inc to focus on the differences in how consumers perceive product design as opposed to product packaging as a source identifier, ultimately concluding that colour on product packaging can be inherently distinctive.As the Federal Circuit ruling will control the way in which the USPTO views colour marks going forward, this decision changes the registrability analysis for colour marks. In other words, this decision not only provides trademark practitioners with a topic for academic discussion, but also, more importantly, provides companies with a blueprint for registering colour marks without having to show secondary meaning.In view of the changing legal landscape on this topic, it is important to monitor the USPTO's records – specifically, how it handles colour mark applications going forward. In the meantime, brand owners, especially those battling counterfeit goods, should consider pursuing federal trademark registration for their packaging colour scheme to help strengthen their brand protection.For further information on this topic please contact Rebecca Liebowitz or Renato Pérez at Venable LLP by telephone (+1 410 244 7400) or email ([email protected] or [email protected]). The Venable LLP website can be accessed at www.venable.com.