It’s Not Easy Being Green (If You Are a Color Trademark for Medical Gloves)

The decision underscores the high bar for registering colors as trademarks under US law and further highlights the importance of identifying and promoting colors as marks as well as the need for careful drafting of applications seeking to protect such marks.

In its decision in In re PT Medisafe Technologies[1], the US Court of Appeals for the Federal Circuit affirmed a refusal to register the color green for chloroprene medical examination gloves and adopted, for the first time, the “Milwaukee test” for the genericness of color trademarks. The Federal Circuit has long used a similar test to evaluate the genericness of word marks but, with Medisafe, has now expressly adopted a genericness test for color marks as well. The court’s decision offers important guidance to trademark owners looking to register and enforce colors as trademarks in the United States.

Summary

The Federal Circuit’s decision stems from PT Medisafe Technologies’ 2018 application for a specific shade of dark green (Pantone 3285 C) as applied to the entire surface of chloroprene examination gloves. After the application was refused by the US Patent and Trademark Office (USPTO), and that refusal was subsequently affirmed by the US Trademark Trial and Appeal Board (TTAB), the applicant appealed to the Federal Circuit, which was tasked with reviewing whether (1) the Board applied the correct test for determining whether a color mark is generic and (2) whether there was substantial evidence to support the Board’s determination that Medisafe’s proposed mark was generic. The Federal Circuit affirmed the TTAB’s decision on both issues.

The court observed that the Milwaukee test was first adopted by the Board in a 2019 precedential decision. The Milwaukee test is a slight variation of the long-accepted Marvin Ginn test, which evaluates whether a word mark is generic, but does not specifically address trade dress, including color marks. The Federal Circuit concluded that the Milwaukee test was the correct standard by which to assess whether a color mark is generic.

Regarding the Board’s application of the Milwaukee test, the Federal Circuit held that there was substantial evidence to support the Board’s finding that the color green was generic for the applicant’s applied-for goods. The court applied the Milwaukee test’s two-step inquiry, which first requires that the court identify and define the appropriate genus of goods or services at issue. Then, the court must determine whether the relevant color is so common within the relevant genus that consumers would primarily associate it with said genus rather than as indicating a unique source of goods within the genus. In other words, just as with word marks, if consumers associate the color mark primarily with the genus of goods rather than the unique source of goods, the color cannot function as a trademark.

Relying primarily on Medisafe’s description of goods as set forth in its trademark application, along with Medisafe’s actual use of the color, the Federal Circuit agreed with the USPTO and TTAB’s conclusion that the genus of the goods was “chloroprene medical examination gloves.” In doing so, the Federal Circuit concurrently affirmed the Board’s rejection of Medisafe’s proposed definition that included the limitation “sold only to authorized resellers,” which the Board found improper and indefinite because it would limit the genus to Medisafe’s own goods.

In step two of the inquiry, the Federal Circuit found that the Board had substantial evidence to hold that Medisafe’s dark green color was generic for chloroprene medical examination gloves. In particular, the Board relied on third-party websites, which together showed 15 unaffiliated sellers of chloroprene medical examination gloves in an identical, or nearly identical, shade of dark green as the color claimed in Medisafe’s application. Though Medisafe argued that it manufactured 10 of the 15 gloves, the court found this evidence unpersuasive given that the gloves were offered under a variety of third-party marks with no evidence identifying Medisafe as the manufacturer.

The Federal Circuit then noted, with approval, the Board’s decision affording Medisafe’s two customer declarations little probative value given that they were few in number, identical in form, and relatively conclusory. Finally, the court approved the Board’s decision to give Medisafe’s survey evidence no weight, concluding that it was methodologically flawed because it was conducted by Medisafe’s own attorney, was given to Medisafe’s own customers, and included leading questions.

As a result, the court affirmed the Board’s decision that Medisafe’s applied-for shade of dark green was generic for chloroprene medical examination gloves and thus was not registrable.

Key Takeaways

The Federal Circuit’s decision provides clarity regarding the registrability of color marks in the United States by holding that the Milwaukee test for genericness is applicable to color marks. Under this test, a color mark will be deemed generic if the color is understood by the relevant public primarily as a category or type of trade dress for a genus of goods or services, rather than as an indicator of source.

Trademark owners can bolster their chances of registering a color as a trademark by ensuring that they, as well as their authorized retailers or other sellers, properly identify the mark owner along with the product and identify the subject color as a trademark of the manufacturer. In addition, trademark owners seeking to register color marks must be sure to police the marketplace for unauthorized uses of such marks.

Furthermore, color mark owners should carefully consider the wording of the goods in their trademark applications to ensure that the specification is tailored to avoid the risk of a genericness refusal.

For further guidance on these issues, ArentFox Schiff’s Trademark, Copyright, and Trademark & Unfair Competition Litigation teams are ready to assist.