Trademarks serve as source indicators for distinguishing the goods sold by different manufacturers. Trade dress, a “symbol” or “device” by which the goods of a manufacturer may be distinguished from the goods of others, is registrable as a trademark if its function is to identify the source of the goods. Trade dress may be the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.

Trade dress marks are entitled to protection if they are inherently distinctive and serve to identify a particular source of a product. Thus, a product’s trade dress is protectable upon a showing of inherent distinctiveness. And if not inherently distinctive, marks may be protectable if they acquire distinctiveness, i.e., if they become distinctive of the applicant’s goods in commerce.

Forney, a manufacturer of accessories and tools for welding and machining, sells products in packaging that has distinct red, yellow, and black labels.

Forney applied to register its trade dress mark on the Principle Register, but was denied registration because the examining attorney determined the proposed mark was not “inherently distinctive.” On appeal, the Trademark Trial and Advisory Board (TTAB) affirmed the refusal holding that while certain types of product packaging could be inherently distinctive source indicators, a color mark (a mark consisting of color),whether applied to a product or its packaging, can never be inherently distinctive. As such, the Board concluded that a particular color on a product or its packaging can only be registered if a showing of acquired distinctiveness is made. The Board further held that product packaging marks which employ color cannot be inherently distinctive in the absence of an association with a well-defined peripheral shape or border.

Forney appealed, and the Federal Circuit reversed.

The appeals court remanded the case back to the TTAB by holding that “color marks can be inherently distinctive when used on product packaging, depending upon the character of the color design.” Inherent distinctiveness turns on whether consumers would “equate the color feature with the source,” and therefore, a color-based trade dress mark can be a source indicator of goods, and is therefore inherently distinctive.

Forney’s proposed product packaging mark consists of a yellow-to red gradient, with a horizontal black bar at the end of the gradient adjacent to the yellow.

The Federal Circuit observed the possibility that consumers would perceive such a mark to suggest the source of the goods in that type of packaging. Accordingly, the TTAB should have considered whether Forney’s proposed multi-color mark makes a sufficient impression on consumers such that they associate the packaging with a particular source. In that regard, the Board must consider the following factors with regard to the trade dress: (1) whether it is a “common” basic shape or design; (2) whether it is unique or unusual in the particular field; (3) whether it is a mere refinement of a commonly adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or, inapplicable here, (4) whether it is capable of creating a commercial impression distinct from the accompanying words. Forney’s proposed mark should be registered if, after consideration of the relevant factors, the Board determines it is reasonable to assume that customers in the relevant market would perceive the trade dress as an indicator of origin.