In applying for registration on the Principal Register, Forney did not provide evidence that its color mark had acquired distinctiveness and instead, merely relied on a theory of inherent distinctiveness. In 2014, Forney applied to register this mark on the Principal Register, which is reserved for marks that are either inherently distinctive or have acquired distinctiveness. ![]() sells accessories and tools for welding and machining and uses product packaging in different shapes and sizes that bear a specific yellow-to-red gradient below a black rectangle, as shown below and on the specimens Forney submitted in connection with its trademark application: Forney provides, for the first time, that a type of color mark may also be inherently distinctive. Historically, word and image marks were the only kinds of marks that courts considered inherently distinctive-like the coined term Xerox or the stylized Apple logo on an iPhone. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 16:3 (5th ed. Inherently distinctive trademarks are “designations that are so distinctive in and of themselves that they are irrefutably presumed to have achieved customer recognition as a symbol of origin immediately upon first use as a mark.” J. The Federal Circuit held that this specific class of color marks could be inherently distinctive and therefore registrable without proof of acquired distinctiveness. A New Standardīut is all of this work to cultivate consumer recognition of a color mark always needed for a color mark to be a source identifier? The Forney decision signals a new, less burdensome standard for applicants of a very specific kind of color mark: namely, multi-color marks used on product packaging. Patent and Trademark Office (USPTO) that their color mark had actually acquired distinctiveness in the minds of consumers and was not functional-which is not an easy task, as General Mills learned in a recent, unsuccessful attempt to trademark the yellow box long used for CHEERIOS cereal. And then they had to convince an examiner at the U.S. Before they could secure the registrations, these companies first had to cultivate consumer recognition of the particular color as an identifier of source: they advertised and promoted the color as their trademark, and sold products and services bearing that color for a substantial period of time, such that the color acquired distinctiveness. Many famous single-color marks for products or their packaging have been registered after proof of acquired distinctiveness-Tiffany & Co.’s robin’s egg blue box, UPS’s brown delivery truck, 3M’s canary yellow Post-It and Cadbury’s purple candy wrapper, to name just a few. Yet that longstanding requirement no longer applies to all color marks, after a new decision by the Federal Circuit in In re Forney, which opens the door for the first time to certain color marks gaining protection as inherently distinctive. Samara Brothers, Inc., an applicant for a color mark has been required to prove that the color actually serves as an indicator of source in the minds of consumers by showing that the mark has acquired distinctiveness (otherwise known as secondary meaning). law for decades-if they meet a heightened standard for protection. ![]() Trademarks consisting solely of a color applied to products or their packaging have been protectable under U.S. “Whether the Forney Court got the analysis right may ultimately be answered by the Supreme Court, but in the meantime, applicants may seek to register at least multi-color product packaging marks at the USPTO by arguing that they are inherently distinctive.”
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