In Re Forney Industries, Inc.

955 F.3d 940 (Fed. Cir. 2020)

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Nature of the Case

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Facts

P sells accessories and tools for welding and machining in packaging that displays its proposed mark. P filed Trademark Application No. 86/269,096 for its proposed mark for packaging for various welding and machining goods. P sought to register the mark without showing acquired distinctiveness. P identified its mark as a 'color mark' (the colors black, yellow, and red are claimed as a feature of the mark.) The examining attorney refused registration under Sections 1, 2, and 45 of the Lanham Act because the mark 'is not inherently distinctive.' P revised the mark description: 'The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.' The examining attorney refused to register the revised mark, stating that the mark was not inherently distinctive, and should be registrable only on the Supplemental Register, or, on the Principal Register with sufficient proof of acquired distinctiveness. P appealed to D, arguing that its proposed mark should be treated as product packaging claiming multiple colors. P claimed the mark is 'product packaging trade dress that may be inherently distinctive and, therefore, registrable without proof of acquired distinctiveness.' D found that, when assessing marks consisting of color, there is no distinction between colors applied to products and colors applied to product packaging. Trade dress can be inherently distinctive, although the law 'is silent' on how to determine inherent distinctiveness of trade dress. It found that color applied to a product may serve as a trademark upon a showing of acquired distinctiveness. But, a color mark, that is a mark consisting of color-whether applied to a product or its packaging-is not among them. The Board concluded that 'Wal-Mart and Qualitex together make clear that 'a particular color on a product or its packaging' . . . can never be inherently distinctive and may only be registered on a showing of acquired distinctiveness.' Since P had not 'attempted to combine its color mark with a uniform shape, pattern, or other distinctive design' D held that a color mark consisting of color applied to product packaging cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border. P appealed.