It is common to register trademarks containing colors and applications for these marks do not normally require rigorous examination. But, attempting to register a mark that consists solely of a color does require rigorous examination and evidence. Color, by itself, is not considered to be inherently distinctive and, therefore, evidence of acquired distinctiveness – including a demonstration that customers view the color as an identifier of source – must be demonstrated. Below is an application that met the stringent criteria and was successfully registered for the color “blue.”
USA NG applied for the color “blue” as a trademark, describing it as “the color blue Pantone 306 C as a background for advertising, promotional materials, signage, labels, and packaging” for use in connection with “[d]ietary and nutritional supplements.” The drawing of the mark is a “blue” swatch (below left) and as in use (below right):
The USPTO coded the mark as follows: 26.09.21 – Squares that are completely or partially shaded and 29.04.03 – Blue (single color used on packaging, labels or signs). A search of the color blue on packaging, labels or signs (29.04.03) reveals the following marks:
The first mark on the above left, is also a USA NG mark.
A search of the color “blue” for the entire goods/services (29.02.03) reveals additional color marks as follows:
And multiple colors (29.07.03) containing the color blue are below:
The Examining Attorney also searched marks claiming the “green” color and shapes (bottles, jars or flasks, cases and soap dispenser and bags etc.).
First Office Action
After the search, the Examining Attorney issued an office action citing refusals to registration based on Trademark Act Sections 1, 2 and 45. Specifically, the Examining Attorney stated, “[r]egistration is refused because the applied-for color mark, consisting of one or more colors used on some or all of the surfaces of a product or product packaging, is not inherently distinctive” and “the evidence of record shows that consumers of dietary and/or nutritional supplements often purchase such goods in opaque solid colored pouches and do not necessarily associate such packaging as an indication of source.” As examples, the Examining Attorney provided pictures of the packaging below:
More importantly, the Examining Attorney stated, “[t]he burden of proving that a color mark has acquired distinctiveness is substantial. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding the color pink used on fibrous glass residential insulation to have acquired distinctiveness based on evidence of twenty-nine years’ use, extensive affidavit and documentary evidence, surveys, and extensive media advertising expenditures.)”
The Examining Attorney also asked a number of questions including whether there is a purpose to the blue color, whether it is a natural by-product of the manufacturing process, or whether there is any significance in the industry for the blue color.
In reply, USA NG stated that its “color mark is distinctive, non-functional, and has acquired secondary meaning in the relevant industry.” The answer to the above questions was no purpose to the color, the color is not a by-product of manufacturing and no significance to the color in the industry.
To demonstrate that its mark is distinctive and non-functional, USA NG provided the statement, “[a]s the following response will show … [USA NG’s] use of blue Pantone 306 C on its goods is recognizable across the sports supplement industry as … [USA NG’s] signature ‘trademark look.’ While it may seem like just a background in isolation, a review of … [USA NG’s] wide product line and promotional materials reveals that this ‘background’ is found on virtually all things associated with … [USA NG].” See examples below:
Whereas other companies use different styles and colors:
Second Office Action
After submission of this response, the only remaining issue was the drawing (“[f]or marks consisting of a configuration of the goods or their packaging or a specific design feature of the goods or packaging, namely, the application of color, the drawing must depict a single three-dimensional view of the goods or packaging, showing in solid lines those features that … [USA NG] claims as its mark”).
The old description was: “the color blue Pantone 306 C as a background for advertising, promotional materials, signage, labels, and packaging” and the new description is “the color Pantone 306 C and is presented as a three-dimensional design feature applied to the packaging of the claimed goods, namely, the body of the packaging of the claimed goods. The dotted lines outlining the packaging only indicate the placement of the mark on the claimed goods and are not part of the mark. The shape of the packaging is not claimed as part of the mark.” The initial drawing is shown below on the left and to the right is the revised drawing:
Third Office Action
The application was approved but later withdrawn from publication on the grounds that the acquired distinctiveness claim could not be accepted because the “use dates show that the mark has only been in use for three years, [and, therefore,] the breadth of evidence provided is insufficient.” That is, “[b]ecause marks comprised solely of color are never considered inherently distinctive, and … [the] dates of use show that the mark has been in use only three years, the claim of acquired distinctiveness cannot be accepted at this time.” Note: According to the TMEP (1212.05(a)), a prima facie case for acquired distinctiveness is usually five years, however, for overall color of a product, “evidence of five years’ use is not sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for the relevant goods/services/classes would be required to establish distinctiveness.” (emphasis added)
USA NG replied with additional actual evidence of use of the mark, stating, “[w]hile the Examiner does not believe that this three year use is sufficient to accept that … [the] mark has acquired distinctiveness, … [USA NG’s] use has been exclusive; there are no other similar-looking packages in the dietary and sports supplement industry. To the extent … [USA NG] is aware of any sports nutrition products using a similar look … [USA NG] has opposed, or is in the process of opposing such use. … [USA NG’s] applied-for mark is widely known by consumers and the industry at large as evidenced by the awards issued to … [USA NG] for the recognition of its brand and growing presence in the marketplace … Furthermore, … [USA NG’s] packaging bearing the applied-for mark has been recognized by Graphic Design USA as one of the outstanding designs of 2014 in the Sports, Games and Toys division of its American Package Design Awards … [USA NG’s] long and exclusive use supports the finding that its packaging trade dress has acquired distinctiveness and serves as an indicator of source.”
After this submission of additional actual evidence, the application was approved and a registration (U.S. Reg. No. 5102729) issued on December 16, 2016.
Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380