Color Marks for Product Packaging Can Be Inherently Distinctive

In a precedential ruling, the Federal Circuit held that "color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design." In re Forney Industries, Inc., Appeal No. 20191-1073 (April 8, 2020). The case came before the Federal Circuit as a result of Forney's seeking trademark registration of a black, yellow, and red design for its product packaging. The TTAB refused registration on the basis that a color mark applied to product packaging can never be inherently distinctive, citing the SCOTUS's Qualitex decision. In Qualitex, SCOTUS held that color may function and be protected as a trademark as long as it has secondary meaning.

The Federal Circuit disagreed and held: "While it is true that color is usually perceived as ornamentation, a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive." Thus, the Board should have considered the CAFC's criteria for inherent distinctiveness, "rather than blanketly holding that colors alone cannot be inherently distinctive." 

In view of this ruling, clients should consult with their IP counsel about strategies for protecting their use of color on product packaging.