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Removing The Boundaries Of Color

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REMOVING THE BOUNDARIES OF COLOR

by Jonathan Hudis ^*

The Supreme Court, citing authoritative commentary on the subject,⁴ stated that the requisites for qualification of a word or symbol as a protectible trademark are that it be (1) a symbol, (2) used as a mark, (3) to identify and distinguish the seller's goods from goods made or sold by others, (4) that is not functional.⁵ The Court then held that the green-gold color of Qualitex's press pads met those requirements, qualifying it for trademark protection like any other word or design mark:

Indeed, the District Court . . . entered findings . . . that show Qualitex's green-gold press pad color has met these requirements. The green-gold color acts as a symbol. Having developed secondary meaning (for customers identified the green-gold color as Qualitex's), it identifies the press pads' source. And, the green-gold color serves no other function. . . . Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark [, and the Court found none,] trademark law would protect Qualitex's use of the green-gold color of its press pads.⁶

The Court, then, found that the green-gold color of Qualitex's press pads had acquired a "source identifying" function through customer recognition--in other words, it had acquired "secondary meaning."

The question left unanswered by Qualitex is whether color, applied to a product or used in connection with a service in an inherently distinctive fashion, can be capable of trademark protection in the absence of secondary meaning. An analysis of the legislative history of the Lanham Act and other significant trademark cases of recent vintage suggest that such a color mark could be capable of protection. However, acquisition of trademark rights in color is not limitless, but still is subject to the requirement that the application of color to a product serve as a trademark.

I. Legislative History of the Lanham Act -
Support For An Expansive View of
What Qualifies For Trademark Protection

Testimony before Congress leading to passage of the Lanham Act of 1946 demonstrates that the prevailing concept of what could be considered a "trademark" was extremely broad. Testifying before the House of Representatives, Subcommittee on Trade Marks of the Committee on Patents ("House"), Chicago practitioner Edward S. Rogers stated:

If they identify goods as a matter of fact they are trade-marks and I do not care what you call them. Anything else is simply a play on words.

If [whether the mark is distinctive] is susceptible of proof and can be proved, registration should be allowed and any benefit that follows from registration.⁷

In a statement submitted by Stewart L. Whitman to the House, he recited a commonly accepted definition of "trademark" in this fashion:

One of the clearest definitions ever to survive the test of time was given of a trade-mark in 1860 by Francis H. Upton, as follows:

A trade-mark is a name, symbol, figure, letter, form, or device adopted and used by a manufacturer or merchant in order to designate the goods that he manufactures or sells, and distinguish them from those manufactured or sold by another; to the end that they may be known in the market as his, and thus enable him to secure such profits as result from a reputation for superior skill, industry or enterprise.⁸

Testifying before the Senate, Subcommittee on Trade-Marks of the Committee on Patents ("Senate"), Atlanta practitioner and member of the Trademark Legislation Committee of the American Association, Daphne Robert, stated:

Trade-marks are symbols or names, words or devices which distinguish the products of one manufacturer from the products of another manufacturer.⁹

The resulting definition of a "trademark," stated in Section 45 of the Lanham Act as passed by the 79th Congress and signed into law by President Harry S. Truman included "any word, name, symbol or device or any combination thereof. . . ."

In 1988, when Congress made significant changes to the Lanham Act, this definition remained unchanged. This was noted By Justice Breyer in Qualitex:

In 1988 Congress amended the Lanham Act, revising portions of the definitional language, but left unchanged the language here relevant.

Indeed the Senate Report accompanying the Lanham Act revision explicitly . . . [says] that the "revised definition intentionally retains . . . the words 'symbol or device' so as not to preclude the registration of colors, shapes, sounds or configurations where they function as trademarks." S. Rep. No. 100-515 at 44. In addition, the statute retained language providing that "[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration . . . on account of its nature" (except for certain specified reasons not relevant here). 15 U.S.C. § 1502.¹⁰

Congress, in fact, retained the salient language of the statute against the following background: (1) the Federal Circuit Court of Appeals had already decided the pink fiberglass insulation case,¹¹ (2) the United States Patent and Trademark Office ("PTO") had adopted a policy of permitting registration of color as a trademark,¹² and (3) a 1987 report of The United States Trademark Association (now the International Trademark Association)¹³ noted that the terms "any word, name, symbol, or device" as used in Section 45 of the Lanham Act¹⁴ had come to include color.¹⁵

Prior to the Qualitex decision, commentary had suggested that the Lanham Act may have required amendment by further legislation before color was to be recognized as a protectible trademark.¹⁶ Legislative amendments to the Lanham Act, suggested by the commentary, however, were found in Qualitex to be wholly unnecessary:

The Lanham Act significantly changed and liberalized the common law to "dispense with mere technical prohibitions," . . . most notably, by permitting trademark registration of descriptive words . . . where they had acquired "secondary meaning.". . . The Lanham Act extended protection to descriptive marks by making clear that (with certain explicit exceptions not relevant here),

nothing . . . shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. 15 U.S.C. § 1052(f). . . .

This language permits an ordinary word, normally used for a nontrademark purpose (eg., description), to act as a trademark where it has gained "secondary meaning." Its logic would appear to apply to color as well.¹⁷

It is clear then, that so long as color "functions as a trademark," it is capable of protection.

II. Protection of Color Alone As A Trademark,
Under Qualitex, Was Predicted Upon The
Acquisition of Secondary Meaning

The record before the Supreme Court in Qualitex overwhelmingly demonstrated that the green-gold color of the plaintiff's pads for professional clothes-pressing machines had acquired significant customer recognition in the relevant industry¹⁸ -- otherwise known as secondary meaning.¹⁹ As such, the green-gold color of the plaintiff's press pads was entitled to trademark protection, like any other design or word trademark.²⁰

How then does a mark "acquire" secondary meaning? The Federal Circuit Court of Appeals answered this question ten years before Qualitex, in In re Owens-Corning:

An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner's method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.²¹

As a practical matter, until their products in connection with their color marks have been promoted or sold in the market place, many businesses cannot amass this type of evidence. In the meantime, while a proprietor's color mark may be subject to trademark protection without registration,²² during this time the mark will not receive the benefits of registration.²³

What if, then, at the outset, the proprietor uses its color mark in an arbitrary fashion. Is such a mark capable of trademark protection from its very adoption and initial use (without first having acquired secondary meaning) as is an arbitrary word mark? Analogous precedent from the Supreme Court strongly suggests an affirmative answer to this question.

III. Two Pesos v. Taco Cabana Bridges The Theoretical Gap
Left By Qualitex As To The Protection of Distinctive
Color Marks That Have Not Yet Acquired Secondary Meaning

In Two Pesos, Inc. v. Taco Cabana, Inc.,²⁴ the Court stated that a trademark is capable of protection without a showing of secondary meaning if it is found to be inherently distinctive, and that the trade dress²⁵ of a product (which can include color) should be protected in the same fashion.²⁶ The Court held that the "festive eating atmosphere" trade dress of Taco Cabana's Mexican restaurants was capable of unregistered trademark protection under Section 43(a) of the Lanham Act,²⁷ without a showing that it had acquired secondary meaning, because the jury had found it to be inherently distinctive.²⁸

Two Pesos cited with approval Judge Friendly's analysis, classifying trademarks by increasing categories of distinctiveness, in Abercrombie & Fitch Co. v. Hunting World, Inc.²⁹ Under Abercrombie & Fitch, generic terms are never capable of trademark protections.³⁰ Marks which are merely descriptive of a product, and thus are not inherently distinctive, may only be protected upon a showing that they have acquired secondary meaning.³¹ On the other hand, suggestive, fanciful and arbitrary marks, which are deemed by their very nature to be inherently distinctive, are capable of protection without a showing that they have acquired secondary meaning.³²

The trade dress which the jury found inherently distinctive in Two Pesos consisted of the following:

a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio included interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon strips. Bright awnings and umbrellas continue the theme.³³

If, under Taco Cabana, inherently distinctive trade dress is capable of Lanham Act protection, so too should be color arbitrarily or suggestively applied to a product or service. The analysis engaged in by the Taco Cabana Court as to trade dress does not suggest that a different analysis applies to color. Indeed, the Taco Cabana Court's decision decidedly moves those symbols which some circuits had decided to treat disparately from word marks clearly into a single analysis for trademark protection. Having discarded the theories which had separated color marks from the same treatment as other symbols of origin--color depletion particularly -- the Qualitex Court removed any perceived barrier to the equal protection of color as a mark. This leaves open the application of the Taco Cabana Court's rule barring discrimination against inherently distinctive non-word symbols of origin to include color. Just as Taco Cabana can (and should) be read to support the registrability of distinctive trade dress, the Qualitex decision should be read to support the registrability of inherently distinctive color marks without having to first prove secondary meaning.

IV. The "Reining In" Factor:
Functionality

Color marks, whether inherently distinctive or having acquired distinctiveness (secondary meaning), are not entitled to limitless Lanham Act protection. Color marks are incapable of protection if they are "functional." Marks may be deemed to be functional in a utilitarian sense or in an aesthetic sense.

Traditional notions of utilitarian functionality are derived from the concept that product features which in some fashion are primarily "useful" and do not serve a source identifying purpose cannot serve as a trademark.³⁴ In current nomenclature, a product feature that is de facto functional "has a function"; yet it still may be capable of trademark protection if it is understood to identify the source of the product. A product feature is de jure functional if it is so superior in design that the product works better. Such a de jure functional feature cannot be granted trademark protection because to do so would hinder legitimate competition.³⁵

Similarly, aesthetic design features which supply a superior competitive advantage cannot be appropriate by a single manufacturer or merchant.³⁶ This concept of "aesthetic functionality" previously appeared to be a discarded theory in the Federal Circuit Court of Appeals.³⁷

The Qualitex decision, however, appears to have resurrected the concept of "aesthetic functionality" that had fallen into disfavor -- at least in the Federal Circuit. The Qualitex Court stated:

The Restatement (Third) of Unfair Competition adds that, if a design's "aesthetic value" lies in its ability to "confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs," then the design is "functional." Restatement (Third) of Unfair Competition §17, Comment c, pp. 175-176 (1995). The "ultimate test of aesthetic functionality," it explains, "is whether the recognition of trademark rights would significantly hinder competition." Id at 176.

The upshot is that, where a color serves a significant nontrademark function . . . courts will examine whether its use as a mark would permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient. That examination should not discourage firms from creating aesthetically pleasing mark designs, for it is open to their competitors to do the same.³⁸

Whether the concept is one of utilitarian or aesthetic functionality, the essential inquiry in both instances is whether the claimed design feature of the mark, here its overall color, unduly hinders bona fide competition. If it does, trademark rights are unavailable. This is akin to the concept that generic words or phrases are not capable of trademark protection, because a single proprietor cannot appropriate common vernacular from the English language used to refer to products.³⁹

V. Conclusion

A combined reading of Qualitex and Two Pesos shows that a color, if applied to a product or service in an arbitrary or suggestive fashion, which does not confer on its owner a superior competitive advantage, is capable of protection even without a showing of secondary meaning. This is supported by the broad language of Section 45 of the Lanham Act, and bolstered by the legislative history from which the statute originated.

Two cases recently issued by the Second Circuit Court of Appeals disagree with this author's analysis. In dicta, a panel of the Second Circuit in Fabrication Enterprises, Inc. v. Hygienic Corp. stated that "[p]ursuant to Qualitex, Lanham Act protection may be garnered only upon a showing of secondary meaning. Qualitex Co., 115 S Ct at 1303."⁴⁰ In Mana Products Inc. v. Columbia Cosmetics Mfg. Inc.,⁴¹ a different panel of the Second Circuit held that the plaintiff had failed to adequately show that its color mark had acquired secondary meaning. Mana Products read the same passage from Qualitex as requiring secondary meaning before a color mark would be capable of protection. Both decisions cite the Taco Cabana decision, yet they both ignore its significance -- the analysis of the protectibility of non-verbal symbols of origin.

In this author's opinion, Qualitex, particularly the portion relied upon by the Second Circuit, is not so limiting, and should be read in the context of Taco Cabana. Qualitex left open the question whether color applied in an inherently distinctive fashion qualifies as a protectible trademark in the absence of secondary meaning. While this author believes that the Supreme Court's twin decisions remove any doubt, it may take another litigant's trip to the Supreme Court before we will know for certain.

©1996 Jonathan Hudis

First published in The Trademark Reporter®, Official Journal of the International Trademark Association, January/February 1996, Volume 86, No. 1, pages 1-10.

*.Attorney with the firm of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Arlington, Virginia, Associate Member of the International Trademark Association. The author gratefully acknowledges the advice and assistance of Steven M. Weinberg in the preparation of this article.

[2].See, eg., Campbell Soup Co. v. Armour & Co., 175 F2d 795, 798, 81 USPQ 430, 433 (CA 3 1949), cert denied 338 US 847, 83 USPQ 543 (1949).

[3].See, NutraSweet Co. v. Stradt Corp., 917 F2d 1024, 1027-28, 16 USPQ2d 1959, 1962 (CA 7 1990), cert denied 499 US 983 (1991); First Brands Corp. v. Fred Meyer, Inc. 809 F2d 1378, 1382, 1 USPQ2d 1779, 1781 (CA 9 1987); Deere & Co. v. Farmhand, Inc., 560 F Supp 85, 97, 217 USPQ 252, 261 (SD Ia 1982), affd per curiam 721 F2d 253 (CA 8 1983).

[4].1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§3.01[1], 7.26 (3d ed 1994), cited in Qualitex, supra note 1 at 1304, 34 USPQ 2d at 1164.

[5].Qualitex, supra note 1 at 1304, 34 USPQ2d at 1164.

[6].Id at 1304-05, 34 USPQ2d at 1164.

[7].Hearings on HR 9041 at p 101 (75th Cong, 3d Sess, March 15, 1938).

[8].Hearings on HR 4744 at p 207 (76th Cong, 1st Sess, March 30, 1939).

[9].Hearings on HR 82 at p 20 (78th Cong, 2d Sess, November 15, 1944).

[10].Qualitex, supra note 1 at 1307-08, 34 USPQ2d at 1166-67.

[11].In re Owens-Corning Fiberglas Corp., 774 F2d 1116, 227 USPQ 417 (CAFC 1985) (finding that the color pink applied to fiberglass insulation was capable of trademark protection).

[12].Trademark Manual of Examining Procedure ("TMEP"), §1202.04(e) (GPO 1995).

[13].The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors, 77 TMR 375, 421 (1987).

[14].15 USC §1127.

[15].Qualitex, supra note 1 at 1307-08, 34 USPQ2d at 1166-67.

[16].Jeffery M. Samuels and Linda B. Samuels, Color Trademarks: Shades of Confusion, 83 TMR 554, 569-70 (1993) ("Congress should amend the Lanham Act to clarify that color alone can qualify for trademark protection. . . . Absent a statutory amendment, the current uncertainty over the 'color trademark' issue is likely to continue.").

[17].Qualitex, supra note 1 at 1307, 34 USPQ2d at 1166.

[18].Qualitex, supra note 1, 21 USPQ2d at 1458 ("As a result of the long and exclusive use of its green-gold color in the marketplace Qualitex' . . . pad has acquired distinctiveness or secondary meaning.").

[19].Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 US 844, 851 fn 11, 214 USPQ 1, 4 (1982) ("To establish secondary meaning, a manufacturer must show that, in the minds of the purchasing public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself.").

[20].Qualitex, supra note 1 at 1308, 34 USPQ2d at 1167 ("[I]n light of the District Court's here undisputed findings that Qualitex's use of the green gold color on its press pads meets the basic trademark requirements . . ., we conclude that the Ninth Circuit erred in barring Qualitex's use of color as a trademark. For these reasons, the judgment of the Ninth Circuit is Reversed.").

[21].Owens-Corning, supra note 11 at 1125, 227 USPQ at 422. The evidence presented by the trademark applicant in Owens-Corning included proof of large expenditures for media advertising over a lengthy period of time, and survey evidence of customer recognition. Id at 1125-27, 227 USPQ at 422-24.

[22].Lanham Act, §43(a), 15 USC §1125(a).

[23].The benefits of trademark protection include: (1) the ability to prevent importation of confusingly similar goods into the United States, Lanham Act §42, 15 USC §1124; (2) constructive notice of ownership, Lanham Act §22, 15 USC § 1072; (3) incontestable status, Lanham Act §15, 15 USC §1065; and (4) prima facie evidence of validity and ownership, Lanham Act §7(b), 15 USC §1057(b).

[24].112 S Ct 2753, 23 USPQ2d 1081 (1992).

[25]."The 'trade dress' of a product is essentially its total image and overall appearance . . . 'and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.'" Two Pesos, id at 2755 fn 1, 23 USPQ2d at 1082.

[26].Two Pesos, supra note 24 at 2760, 23 USPQ2d at 1085-86.

[27].15 USC §1125(a). Section 43(a) of the Lanham Act provides relief to "any person [who] is or is likely to be damaged" by another's usage "in connection with any goods or services ... a false designation of original, or any false description or representation." Unregistered trademarks and trade dress are afforded protection under this section.

[28].Two Pesos, supra note 24 at 2755-56 and 2761, 23 USPQ2d at 1082-83 and 1086.

[29].Id at 2757, 23 USPQ2d at 1983, citing Abercrombie & Fitch v. Hunting World, Inc., 537 F2d, 4, 9-11, 189 USPQ 759, 764-66 (CA 2 1976).

[30].Generic terms "refer to the genus of which the particular product is a species." Abercrombie & Fitch, supra note 29 at 9, 189 USPQ at 764.

[31].Descriptive marks "forthwith convey[] an immediate idea of the ingredients, qualities or characteristics of the goods." Abercrombie & Fitch, id at 11, 189 USPQ at 765.

[32].Suggestive marks "require[] imagination, thought and perception to reach a conclusion as to the nature of the goods." Fanciful marks are "invented solely for their use as trademarks." Arbitrary marks are "common . . . [terms that are] applied in an unfamiliar way." Id at 11, 189 USPQ at 765-66.

[33].Two Pesos, supra note 24 at 2755, 23 USPQ2d at 1082.

[34].The most widely cited definition of utilitarian functionality appears in Inwood Laboratories v. Ives Laboratories, supra note 19 at 851 fn 10, 214 USPQ at 4 ("a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article"). See also, Owens-Corning, supra note 11 at 1121, 227 USPQ at 419 ("when the color applied to goods serves a primarily utilitarian purpose it is not subject to protection as a trademark").

[35].Brunswick Corp. v. British Seagull, Ltd., 35 F3d 1527, 1531, 32 USPQ2d 1120, 1122 (CAFC 1994), cert denied 115 S Ct 1426 (1995).

[36].Id at 1533, 32 USPQ2d at 1124.

[37].See In re D.C. Comics, Inc, 689 F2d 1042, 1045, 215 USPQ 394, 397 (CCPA 1982) ("We find no merit in the argument that, by virtue of the aesthetic features identified . . . appellant's drawings are unable to perform as trademarks for dolls.").

[38].Qualitex, supra note 1 at 1306, 34 USPQ2d at 1165-66. In light of the Supreme Court's final imprimatur upon the doctrine of "aesthetic functionality," this author recommends for further reading two extensive articles on the subject: Diana Elzey Pinover, Aesthetic Functionality: The Need for a Foreclosure of Competition, 83 TMR 571 (1993); Bradford J. Duft, "Aesthetic" Functionality, 73 TMR 151 (1983).

[39].See, eg, Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 US 189, 194, 224 USPQ 327, 329 (1985) ("Generic terms are not registrable, and a registered mark may be cancelled at any time on the grounds that it has become generic.").

[40].64 F3d 53, 58 fn 3, 35 USPQ2d 1753, 1756 (CA 2 1995).

[41].65 F3d 1063, 1071, 36 USPQ2d 1176, 1181 (CA 2 1995).