Florists’ Transworld Delivery, Inc. (“FTD”) applied to register the mark shown below, consisting of the color black as applied to the outside of a box for floral arrangements (U.S. Application Serial No. 77590475):
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The Examining Attorney refused registration on the ground that the color black is functional in connection with floral packaging. The TTAB affirmed, finding that a competitive need exists for others in the floral industry to be able to use black for such packaging.
The TTAB held that, under Supreme Court case law and the prior decisions of the Federal Circuit, the key issue in determining whether a particular color can be registered as a trademark is competitive need. Here, the Examining Attorney produced evidence showing that color in the floral industry has special significance and is necessary to communicate particular messages. For instance, depending on the context, black floral arrangements may be associated with stylish or formal events to convey luxury or elegance, may connote grief or condolence in the context of funerals, or may be necessary for Halloween bouquets. The Examining Attorney also produced evidence indicating that the color of floral packaging can be just as important as the color of the flowers themselves in conveying such messages.
Based on the record evidence, the TTAB agreed there was a competitive need for others in the floral industry to be able to use the color black in connection with floral arrangements. Because there exist no alternative colors to convey the same messages as black, competitors desiring to convey such messages by using black would be disadvantaged if a single company owned exclusive rights to the color. The TTAB also found FTD’s arguments that the PTO had allowed other single-color marks in the related horticultural industry unpersuasive (for instance, FTD pointed to third-party registrations of the color pink as applied to a container for live petunia plants, the color gold as applied to pots for flowers and plants, and the color teal as applied to a container for live plants). Unlike black in the floral industry, the TTAB said there was no evidence that these particular colors had any particular significance or conveyed certain messages in connection with the goods involved.
This case is a useful reminder that the determination of whether a single-color mark is registrable is highly fact-dependent and must take into account the meaning and significance of color in the particular industry at issue. If color is used in a certain industry to convey particular messages and no alternatives exist to convey those same messages, the color is likely to be found functional and thus unregistrable.