The short answer, it depends. Single or multiple color marks applied to packaging are never inherently distinctive. Marks that are inherently distinctive are those that have the ability upon being used the very first time to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself.

As to single color marks, the question becomes whether the color in particular is generic for the identified goods and thus unregistrable under Trademark Act Sections 1, 2 and 45 because it cannot function as a mark.

Thus, as a form of trade dress, a single color applied to goods may be generic for those goods if it “fails to serve as an indicator of source.” See Sunrise Jewelry Mfg. Corp. v. Fred S.A.

Recent cases shed light why single-color marks face a heavy burden, not only of obtaining registration, but defending it against cancellation attacks.

In RTX Scientific, Incorporated v. Nu-Calgon Wholesaler, Inc., Cancellation No. 92055285 (May 29, 2015). The Trademark Trial and Appeal Board (TTAB) ordered the cancellation of a registration for a single color mark for the mark represented by this logo , claiming the color blue for “cleaning preparation for air conditioning or refrigeration coils”. The Board argued that “Whether or not a majority of alkaline coil cleaners are blue, it is clear that either a majority or a large minority of the alkaline coil cleaners offered by major players in the industry are blue”.

In another instances, for example, the Board found the color green functional for lawn sprinklers , and the color Rose generic for beer , the color yellow of the Cheerios box failed to function as trademark because it lacked acquired distinctiveness “do not perceive the color yellow as having source significance for the goods.” In re General Mills IP Holdings II, LLC, Serial No. 86757390 (August 22, 2017).

On the other hand, the Federal Court of Appeals for the Federal Circuit In re Owens-Corning Fiberglas Corp., 227 USPQ 417, 424 (Fed. Cir. 1985) reversed a TTAB decision and found determined that the color pink does function as a trademark for fibrous glass for residential insulation.

The Court concluded that “on the totality of the evidence, the Board’s finding that the color “pink” does not function as a trademark for OCF’s fibrous glass residential insulation is clearly erroneous” and allowed the applicant to register its mark under.

I have helped countless small to medium sized businesses navigate the intricacies of genericness  and descriptiveness in trademark law to secure and protect their intellectual property rights. I’d like to help you too by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas before a trademark squatter does.

Augusto Perera, Esq.
Intellectual Property, Business and Legal Affairs Attorney

Augusto Perera, P.A.
121 Alhambra Plaza
Suite 1500
Coral Gables, FL 33134

T. 305-489-1901
T. 888-581-0816
F: 305-721-1532
C: 786-200-8674 (Call, Text or WhatsApp)
E: ap@tmmiami.com
www.tmmiami.com

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