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LexBlog/99 Park Row
Jessica R. Corpuz
August 18, 2022

Many people associate brands with particular colors – if you think of Tiffany & Co., you think of its famous robins-egg blue boxes and branding; if you think of Barbie, you can see the bright pink that came with so many childhood toys. Not many people realize, however, that brands can trademark those colors and prevent others from using them. . . .

However, not everyone can trademark a color. There are two key hurdles to obtaining a color trademark. First, the color has to distinguish the business’s goods and identify that business as the source of the goods. If the color is commonly used by all business in the space, the trademark may be rejected. For example, Cheerios was denied a trademark largely on the grounds that many kinds of breakfast cereal use the same or similar color yellow. The court found that it had not acquired enough “distinctiveness” in the eyes of consumers.

Second, the color cannot serve a functional purpose. For example, Pepto-Bismol was denied a trademark on the color pink because of the color’s “therapeutic value” in treating upset stomachs. The court reasoned that Pepto-Bismol’s competitors might want to use that color in order to compete effectively in the market.

New brands should be wary of using colors that are already trademarked or heavily identified with a particular brand.  . . .

[ed’s note: think John Deere Green and Cat Yellow]

The content in this post was found at https://www.lexblog.com/2022/08/18/corporations-can-own-colors-and-they-can-sue-you-for-using-their-color/ Clicking the title link will take you to the source of the post and was not authored by the moderators of freeforafee.com

LexBlog
Paul Bost
April 21, 2020

On April 8, 2020, in In re: Forney Industries, Inc.,[1] 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).

…

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.

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The content in this post was found at https://www.lexblog.com/2020/04/21/color-marks/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

The US Court of Appeals for the Federal Circuit wiped out (PDF) a sizable chunk of Apple’s biggest legal win today, overturning parts of a 2012 jury verdict against Samsung that entitled the iPhone maker to $930 million in damages.

Apple won that trial on both patent claims and claims related to “trade dress,” an amorphous part of trademark law. The Federal Circuit, which considers all patent appeals, said the trade dress claims weren’t legally justified and threw them out. The Federal Circuit is leaving it to the lower court to issue a final judgment, but since those claims accounted for $382 million of Apple’s big win, that’s how much Apple is expected to lose. It’s more than 40 percent of the verdict winnings, leaving $548 million on the table for Apple to collect.

In the view of the appeals judges, the iPhone’s trade dress isn’t protectable at all, because it’s more functional than decorative.