Color marks on packaging can be inherently distinctive – In re Forney

In re Forney Industries, Appeal No. 2019-1073, Fed. Cir. April 8, 2020.

Forney applied for a trademark for packaging based on use in commerce, with a showing of acquired distinctiveness.  In its application, Forney described its mark as a “color mark” consisting of a solid black stripe, with the color yellow underneath, transitioning to the color red, located on packaging or labels.  The PTO rejected Forney’s application, stating that the mark was not inherently distinctive, and only registerable on the Supplemental Register, without proof of acquired distinctiveness.  Forney appealed, and the Federal Circuit reversed, holding:

…we hold that color marks can be inherently distinctive when used on product packaging, depending on the character of the color design…While it is true that “color is usually perceived as ornamentation,” In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive