Color Mark Requires Use with Defined Shape, Pattern, or Design to be Distinctive: Tenth Circuit | Practical Law

Color Mark Requires Use with Defined Shape, Pattern, or Design to be Distinctive: Tenth Circuit | Practical Law

In Forney Industries, Inc. v. Daco of Missouri, Inc., the US Court of Appeals for the Tenth Circuit affirmed the district court's grant of summary judgment of no trade dress infringement to Daco of Missouri, Inc., finding that Forney Industries, Inc.'s use of colors in its product packaging is not a protected mark under Section 43(a) of the Lanham Act.

Color Mark Requires Use with Defined Shape, Pattern, or Design to be Distinctive: Tenth Circuit

by Practical Law Intellectual Property & Technology
Law stated as of 30 Aug 2016 • USA (National/Federal)
In Forney Industries, Inc. v. Daco of Missouri, Inc., the US Court of Appeals for the Tenth Circuit affirmed the district court's grant of summary judgment of no trade dress infringement to Daco of Missouri, Inc., finding that Forney Industries, Inc.'s use of colors in its product packaging is not a protected mark under Section 43(a) of the Lanham Act.
On August 29, 2016, in Forney Industries, Inc. v. Daco of Missouri, Inc., the US Court of Appeals for the Tenth Circuit affirmed the US District Court for the District of Colorado's grant of summary judgment to the defendant in an action claiming infringement of Forney's color mark ( (10th Cir. Aug. 29, 2016)). The court held that Forney's use of colors in its packaging of metalworking products is not protectable under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).
Citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), the court reasoned that the use of color in product packaging can be inherently distinctive, making a showing of secondary meaning unnecessary, only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design.
The Tenth Circuit found that there is no inherent distinctiveness in Forney's use of its colors because:
  • Forney's description of its trade dress is vague; and
  • Forney's use has been so varied that there is no consistent shape, pattern, or design that can be discerned from the description or examples it provides.
Furthermore, the court found that Forney could not show that its mark had attained secondary meaning through any direct evidence. Forney offered evidence of its promotional and advertising efforts and its total sales volume, but it failed to show how those efforts or sales create an association of the color mark with the products.
In addition, although exclusive use of a trade dress over a great length of time may support a finding of secondary meaning, Forney neither exclusively nor continuously used the same trade dress over a long period. Therefore, Forney failed to make a sufficient showing of exclusive use to survive summary judgment.