The US Court of Appeals for the 10th Circuit, in affirming a
district court ruling, reaffirmed the availability of trade dress
protection for colors, but reiterated that a plaintiff must show
that its color trade dress is inherently distinctive or has
acquired secondary meaning to become distinctive. Forney
Industries, Inc. v. Daco of Missouri, Inc., Case No. 15-1226
(10th Cir., Aug. 29, 2016) (Hartz, J).
Forney, a manufacturer of metalworking parts, sold numerous
products for decades in packaging that contains a color combination
of red, yellow, white and black. Forney sued Daco, dba KDAR, for
infringement of its unregistered color trade dress. KDAR's
packages also included a color scheme of red, yellow, white and
black in connection with a flame design. After the district court
granted summary judgment to KDAR on the grounds that Forney had
failed to show either inherent distinctiveness or acquired
distinctiveness, Forney appealed.
The 10th Circuit agreed with the district court that
Forney's color mark was not described clearly enough to
determine which particular trade dress features were being claimed
as comprising the protected mark, and that Forney's color
scheme was not tied to any unique features such as a pattern,
design or shape—the only way that a color mark can achieve
inherent distinctiveness. The Court emphasized that even though the
four colors were used for decades on Foley's packaging, the
layout and color arrangement had been so erratic over the years
that the Court could not discern any identifiable pattern that
could be ascertained as Foley's trade dress. The Court queried
whether Foley's description of its mark in the pleadings
"would [even] satisfy the articulation requirement for a
protectable mark," and concluded that Foley failed to
establish inherent distinctiveness in its mark.
Forney did not provide direct survey evidence of acquired
distinctiveness, and its indirect evidence fell short. Foley's
proof of continuous and exclusive use consisted mainly of a
"conclusory" declaration by Forney's CEO that the
four colors had been used for 25 years on product packaging, that a
large amount of advertising money had been spent and that sales
revenues were "over half a billion dollars" during that
time frame. However, Forney did not show the most critical element
of evidence of acquired distinctiveness, which is a nexus between
the color mark itself and the advertising/sales. Without this,
there is no proof that consumers, upon seeing the packaging with
those four colors, would identify it as originating from a single
source. In addition, KDAR provided evidence of third-party
packaging that used the same colors, so it was not even clear that
Forney was the exclusive user of the claimed trade dress for its
allegations to survive summary judgment.
Practice Note: To show inherent distinctiveness
of a color mark, proprietors should try to link it to a unique
pattern, shape or design. If that is not feasible, secondary
meaning can be litigated using survey evidence or other evidence
that shows that the color mark is recognized as a source of origin
indicator or that the color(s) are touted in advertising by a
single source as a source indicator.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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