Functionality refusal. A color mark is not registrable on the Principal Register under Trademark Act §2(f), or the Supplemental Register, if the color or colors are functional. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66 (1995); CeramTec GmbH v. CoorsTek Bioceramics LLC, 124 F.4th 1358 1362-63 (Fed. Cir. 2025); Brunswick Corp. v. Brit. Seagull Ltd., 35 F.3d 1527, 1530 (Fed. Cir. 1994); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. See CeramTec GmbH v. CoorsTek Bioceramics LLC, 124 F.4th at 1361-62, 1363-65, 1368 (holding the color pink used in ceramic hip components functional because the addition of a chemical compound, chromium oxide, in a specified amount caused the ceramic to become pink and increased its hardness levels, which enabled the goods to maintain their shape and resist deformation); Brunswick Corp. v. Brit. Seagull Ltd., 35 F.3d 1527 (holding the color black functional for outboard motors because, while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Integra Biosciences Corp., 2022 USPQ2d 93, at *40-41 (TTAB 2022) (holding five different pastel colors for disposable pipette tips in colored rack inserts were functional as they were part of applicant’s color coding scheme to ensure that customers used the proper size pipette tips on the respective pipettes); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (holding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers to communicate a desired sentiment or occasion, such as elegance, bereavement, or Halloween); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1446-47 TTAB 2007 (holding a deep purple shade functional for coated abrasives, because opposer had established a prima facie case that coated abrasive manufacturers had a competitive need to be able to use various shades of purple, including applicant’s shade, and that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding"); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (holding the color pink functional for surgical wound dressings because the actual color of the goods closely resemble[d] Caucasian human skin); In re Orange Commc'ns, Inc., 41 USPQ2d 1036 (TTAB 1996) (holding the colors yellow and orange functional for public telephones and telephone booths, because they are more visible in the event of an emergency under all lighting conditions); In re Howard S. Leight & Assocs., 39 USPQ2d 1058 (TTAB 1996) (holding the color coral functional for earplugs, because they are more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process. See also In re Pollak Steel Co., 314 F.2d 566 (C.C.P.A. 1963) (reflective color on fence found to be functional); Kasco Corp. v. S. Saw Serv. Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade).

The doctrine of "aesthetic functionality" may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely "utilitarian" in nature, nevertheless dictate that the color remain in the public domain. Brunswick, 35 F.3d at 1533; In re Florists’ Transworld Delivery Inc., 106 USPQ2d at 1787-88; see TMEP §1202.02(a)(vi); see also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33 (2001) (U.S. Supreme Court discussed aesthetic functionality, distinguishing Qualitex, 514 U.S. 159, as a case where "[a]esthetic functionality was the central question").

Generic refusal. A color mark is not registrable on the Principal Register under §2(f) or on the Supplemental Register, if the color or colors are generic. In re PT Medisafe Techs., 134 F.4th 1368, 1375-76 (Fed. Cir. 2025) (quoting Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 1326 (Fed. Cir. 1999)) (holding the color dark green for use on chloroprene medical examination gloves generic). A color may be generic when it is incapable of functioning as an indicator of source because it is understood by the relevant public primarily as a category or type of trade dress. Id.; Milwaukee Elec. Tool Corp. v. Freud Am., Inc., Can. No. 92059634, 2019 TTAB LEXIS 384, at *64 (2019) (holding the color red for use on various cutting tools for power woodworking machines generic).

If the proposed color mark is generic, an examining attorney must refuse registration on the Principal Register on the ground that the proposed mark fails to function as a mark under §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. 15 U.S.C. §§1051, 1052, 1053, 1127. The ground for refusal on the Supplemental Register is that the proposed mark is incapable of functioning as a mark under §§23(c) and 45. 15 U.S.C. §§1091(c), 1127.

When determining genericness, a two-step inquiry should be applied to color marks: first consider "the genus of the goods or services at issue," and second consider "whether the color sought to be registered . . . is understood by the relevant public primarily as a category or type of trade dress for the genus of goods or services." In re PT Medisafe Techs., 134 F.4th at 1372, 1374-75 (quoting Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 TTAB LEXIS 384, at *19). The first part of this inquiry is the same as that for generic terms, "requiring identification of the genus of goods or services at issue." In re PT Medisafe Techs., 134 F.4th at 1374. See TMEP §1209.01(c)(i) regarding determining the genus. The second part of this inquiry is tailored to color marks and asks "whether the color sought to be registered . . . is understood by the relevant public primarily as a category or type of trade dress for [a] genus of goods or services." Id. at 1374-76 (quoting Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 TTAB LEXIS 384, at *9) (affirming the Board's finding that the color mark was "so common in the chloroprene medical examination glove industry that it [could not] identify a single source" based, in part, on third-party websites showing unaffiliated sellers of chloroprene medical examination gloves in the same or nearly the same dark green color).

See TMEP §1209.01(c)(i) for more information regarding the relevant public and the evidence needed to show the relevant public’s understanding.