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It’s not easy being green – Federal Circuit affirms TTAB test for color marks
It’s been 30 years since the U.S. Supreme Court held that federal trademark law permits the registration of a trademark that consists, purely and simply, of a color. Obtaining registration for a color mark, however, is no small task. A medical glove manufacturer learned this the hard way after the U.S. Court of Appeals for the Federal Circuit weighed in on the proper test for determining whether a color mark is generic and therefore ineligible for registration.
Color scheme
PT Medisafe Technologies (Medisafe) makes and distributes medical gloves. It applied to register a shade of green as a color mark for use on chloroprene medical examination gloves. The U.S. Patent and Trademark Office (PTO) found not only that the color wasn’t inherently distinctive and that Medisafe failed to show it had acquired distinctiveness, but that the proposed color mark was generic. Because of this, registration was denied.
Medisafe turned to the Trademark Trial and Appeal Board (TTAB). To evaluate the genericness determination, the board applied the so-called Milwaukee test (named for the case where the TTAB first articulated it). The test considers 1) the genus of goods or services at issue, and 2) whether the color is understood by the relevant public primarily as a category or type of trade dress for that genus.
The TTAB rejected Medisafe’s proposed genus — gloves sold to authorized resellers — instead defining the genus as all “chloroprene medical examination gloves.” The relevant public, the board found, was all people or businesses who buy, or may buy, such gloves. It ultimately concluded that the color mark was generic because it was so common in the chloroprene medical examination glove industry that the color green couldn’t identify a single source of the goods (that is, Medisafe).
Color test
On appeal, Medisafe argued that the TTAB applied the wrong legal standard for assessing whether a color mark is generic. It asserted that the Milwaukee test ignores statutory language that allows cancellation of a mark for genericness only if that mark is a “generic name.” Medisafe claimed that the “generic name” requirement applies equally to all types of marks — so a color mark, like a word mark, can be found generic only if it’s a generic name for the goods for which it’s used.
But the court pointed out that it had considered and rejected essentially the same claim in an earlier case. In that case, the court dismissed the contention that the plain meaning of “generic name” in the relevant statute excludes trade dress (including color marks). Rather, the statutory language expansively encompasses anything that has the potential but fails to serve as an indicator of source, including trade dress.
Applying the Milwaukee test to Medisafe’s color mark, the court found that substantial evidence supported the TTAB’s determination that the mark was generic. First, it agreed with the board’s definition of the genus.
Turning to the second step, the court cited some of the evidence the board considered. For example, screenshots of third-party websites showed unaffiliated sellers of chloroprene medical examination gloves in the same, or nearly the same, color.
The court also found it reasonable for the board to reject a survey Medisafe submitted as too flawed to be given weight. The survey was administered by Medisafe’s attorney, not a survey expert, and consisted of leading questions. Moreover, the survey was sent to only six respondents, all of whom were established Medisafe customers. Only three individuals responded, and one said she didn’t consider Medisafe’s color mark to be distinctive.
Color within the lines
Although Medisafe’s proposed mark was deemed generic, the Federal Circuit recognized that a color mark may serve as a source indicator. It emphasized, however, that the relevant inquiry focuses on the consumer perception of the particular color in relation to the relevant genus.
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