On April 8, 2020, in In re: Forney Industries, Inc., the Federal Circuit reversed the Trademark Trial and Appeal Board’s finding that a color mark can never be inherently distinctive. By so holding, the Federal Circuit controverts what had become conventional wisdom since the Supreme Court’s decisions in Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).
On May 1, 2014, Forney filed an application to register the below color mark for various welding and machining goods based on use in commerce.
Forney submitted specimens of use in support of its application, a few of which are depicted below:
The examining attorney assigned to the application found that, as a matter of law, applicant’s mark was only registrable with sufficient proof of acquired distinctiveness, i.e., an affirmative showing by Forney that its mark has become distinctive of its goods in commerce.
Forney appealed the refusal to the Trademark Trial & Appeal Board, arguing that its mark should be considered as product packaging, which, per Wal-Mart, may be inherently distinctive (as opposed to product design, which, accordingly to Wal-Mart, can never be inherently distinctive). In response, the examining attorney argued that color marks – whether used on product packaging or products themselves – cannot be inherently distinctive. The Board affirmed the refusal, holding that Wal-Mart “clarifies that, while certain types of product packaging may be inherently distinctive source indicators, a color mark, that is a mark consisting of color – whether applied to a product or its packaging – is not among them.” The Board also found no reason to distinguish between a mark consisting of a single color and a mark, like Forney’s, consisting of multiple colors.
Lastly, the Board held that a color mark applied to product packaging cannot be inherently distinctive without a well-defined peripheral shape or border. The Federal Circuit noted that this contradicted the Board’s earlier holding (i.e., that a color mark cannot be inherently distinctive regardless of whether applied to a product or its packaging). The Federal Circuit thereby presumed that the Board had asserted this holding in the alternative.
Forney appealed to the Federal Circuit, and Judge O’Malley, writing for the panel, vacated and remanded the decision. Upending what had become conventional wisdom since the Supreme Court’s decision in Wal-Mart – and its predecessor, Qualitex – the panel found that “color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.”
According to the panel, the Supreme Court had never found that a color mark used on product packaging was incapable of being inherently distinctive as a matter of law. In Qualitex, at issue was whether a single color used on a product was protectable trade dress. Although the Court noted, in Qualitex, that color alone may serve a trademark upon a showing of secondary meaning, it did not expressly hold that color may serve as a trademark only upon a showing of secondary meaning.
The panel then turned to Wal-Mart. It acknowledged that the Court in Wal-Mart, based on Qualitex, held that “with respect to at least one category of mark – colors – we have held that no mark can ever be inherently distinctive,” and stated that “design, like color, is not inherently distinctive.” Nevertheless, to the panel, Wal-Mart “merely held that product design trade dress can never be inherently distinctive.” Although not expressly stated in the opinion, the panel implies that Wal-Mart’s statements on the protectability of color marks were either based on a misunderstanding of Qualitex or dicta.
Based on its reading of the above precedent, the panel held that color marks on product packaging can be inherently distinctive. In the instant case, Forney’s mark – a black bar followed by a yellow-to-red gradient – could be considered inherently distinctive. Accordingly, the panel held that the Board erred by not assessing whether Forney’s mark was inherently distinctive.
The panel’s precedential decision is significant. Persons interested in protecting color marks used on product packaging may now be able to obtain registration without showing secondary meaning. Likewise, the holding may be adopted by other courts to allow plaintiffs asserting common law rights in color marks to do so without proof of secondary meaning.
 In re Forney Indus., No. 2019-1073, 2020 U.S. App. LEXIS 11006 (Fed. Cir. Apr. 8, 2020).
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