The Federal Circuit Reconsiders the Inherent Distinctiveness of Color Marks in In re Forney
27 12 2020LexBlog
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).
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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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