Colorado Attorneys Win Landmark Trademark Case
Federal Circuit decision helps clear way for easier registration of ‘color marks’

by Jessica Folker

A small Colorado intellectual property law firm won a major victory in a trademark case on April 8, and the precedent-setting decision from the Federal Circuit is expected to make it easier for other companies that want to register so-called “color marks.”

William Cochran and James Young of Cochran Freund & Young represented Fort Collins-based Forney Industries, a producer of metalworking and welding supplies. Forney wanted to register a mark — essentially a combination of colors — to be used on product backer cards. The proposed mark consists of the colors red fading into orange and then yellow, with a black bar at the top.

Forney applied to register the mark in May 2014 and was refused because, the examining attorney said, the mark is not “inherently distinctive.” A trademark must demonstrate distinctiveness in order to be registered.

THE DIFFICULTY OF DISTINCTIVENESS 

A mark may be considered “inherently distinctive,” and thus easily registered, if it is obvious to consumers the mark identifies the source of the product, rather than describing the product itself. Examples include made-up names like Clorox and Kodak or symbols like the Nike swoosh or McDonald’s golden arches, which don’t evoke or describe the underlying goods.

According to the Trademark Manual of Examining Procedure, color marks are “never inherently distinctive,” and the examining attorney told Forney the only way to register its proposed color combo under the rules is to show “acquired distinctiveness,” which means consumers have come to exclusively associate the mark with a particular product, brand or company.

Showing acquired distinctiveness is “a long, hard process,” said Cochran. “You have to do lots of advertising.”

Building materials maker Owens Corning became the first company to successfully trademark a color — namely, the pink of its fiberglass insulation — in the mid-1980s by showing acquired distinctiveness. The Federal Circuit made that decision in large part due to the company’s decades of multi-million-dollar advertising campaigns that linked the product to the color through slogans like “think pink” and use of the Pink Panther cartoon in ads.

“Our client, on the other hand, never did any ‘look for’ advertising,” Cochran said. “What they did is they sold approximately half a billion dollars’ worth of product using this mark.”

To read this complete articles and others featured in the May 4 print edition of Law Week Colorado, copies are available for purchase online.