955 F.3d 940
Fed. Cir.2020Background
- Forney Industries sells welding and machining goods packaged with a claimed multi-color trade dress: a solid black stripe near the top and a red-to-yellow gradient on packaging/backer card.
- Forney filed a §1(a) application to register the color-based packaging mark without claiming acquired distinctiveness (secondary meaning).
- The examining attorney refused registration as not inherently distinctive and required proof of acquired distinctiveness; Forney appealed to the TTAB.
- The TTAB affirmed, holding that color marks—whether single- or multi-color—applied to products or packaging can never be inherently distinctive and (alternatively) that color-on-packaging marks require a well-defined peripheral shape or border to be inherently distinctive.
- The Federal Circuit vacated and remanded, holding the TTAB erred in both respects and directing the Board to reassess inherent distinctiveness (under Seabrook factors) based on the overall impression of Forney’s claimed color/design.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Can color marks applied to product packaging be inherently distinctive? | Forney: Yes—its multi-color packaging trade dress can be inherently distinctive and registrable without proof of secondary meaning. | PTO/Board: No—color marks (single or multiple), whether on product or packaging, can never be inherently distinctive and require acquired distinctiveness. | Fed. Cir.: No blanket bar; color on packaging can be inherently distinctive depending on consumer perception and overall design; vacated TTAB. |
| Must a color-on-packaging mark be tied to a well-defined peripheral shape or border to be inherently distinctive? | Forney: No—the specific combination and arrangement of colors/design (not a perimeter) can create source-identifying trade dress. | TTAB: Yes—the Board required a well-defined peripheral shape or border for inherent distinctiveness. | Fed. Cir.: Rejected the perimeter requirement; Board must apply Seabrook factors and evaluate overall commercial impression. |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (trade dress can be inherently distinctive and protected without secondary meaning)
- Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (U.S. 1995) (no absolute bar to color alone serving as a trademark; color may require secondary meaning)
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (U.S. 2000) (product design trade dress cannot be inherently distinctive; distinguishes product design from product packaging)
- Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977) (factors for assessing inherent distinctiveness of trade dress)
- Forney Indus., Inc. v. Daco of Missouri, Inc., 835 F.3d 1238 (10th Cir. 2016) (held color in product packaging can be inherently distinctive in appropriate circumstances)
- In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir. 2010) (inherent distinctiveness is a legal question reviewed de novo)