United States: TTAB: Black Color Mark For Flower Boxes Won’t Fly

Last Updated: July 9 2013
Article by Rose Auslander

In a decision combining the hot trademark topics of color marks and aesthetic functionality, the Trademark Trial and Appeal Board (TTAB or Board) upheld an examiner's refusal of registration for a single-color mark (black) for boxes for "flowers and live cut floral arrangements." In re Florists' Transworld Delivery, Inc., Serial No. 77590475 (T.T.A.B. Mar. 28, 2013) (precedential).

Florists' Transworld Delivery, Inc. filed an intent-to-use application to register the mark on October 10, 2008. The applicant subsequently filed an amendment to claim first use as of December 8, 2008, and to claim that the color had acquired distinctiveness as a result of its extensive use and promotion. The examiner refused registration on two bases: (1) that the mark was merely ornamental and would not be perceived as a trademark and (2) that the applicant had not proven acquired distinctiveness.

As to the first basis, the examiner argued that the mark served both a utilitarian and an aesthetic function when used for floral packaging. The examiner refused registration on the ground of aesthetic functionality, finding that "black, in the context of floral arrangements, is associated with stylish or formal events such as weddings, providing an 'elegant,' 'classical' or 'luxurious' look, and in other contexts may connote grief or condolence, and is a critical color in connection with Halloween displays; and there is a strong competitive need for the color black in order to permit the appropriate or desired message to be sent by the consumer to a recipient of flowers." The TTAB treated the examiner's comments as conceding that the color mark was not in fact functional in a utilitarian way.

The TTAB noted that the applicable test for aesthetic functionality was "whether registration of a particular feature hinders competition and not...whether the feature contributes to the product's commercial success" (quoting M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 U.S.P.Q.2d 1086, 1097 (T.T.A.B. 2001)). It then analyzed whether the applied-for color served a "non-trademark purpose that would hinder the ability of others to effectively compete with the registrant." The Board found that (1) color has significance in the floral industry, such as the use of red for Valentine's Day; (2) black "communicates elegance or luxury," it "has significance on somber occasions such as in the context of death" and it is "a traditional Halloween color"; and (3) competitors who wish to offer flowers for these occasions and purposes "will be disadvantaged if they must avoid using the color black in such packaging," as they need the black packaging "to convey an appropriate message or sentiment."

As for the applicant's evidence of other color registrations, such as the Tiffany & Company registration of a blue box, the TTAB did not find it to be persuasive, since the registrations were for different colors, shapes, goods or occasions and each application must be decided on its own merits. The TTAB then analyzed the applicant's claim of acquired distinctiveness, to render a full decision on all issues presented in the appeal, even though its finding of functionality precluded registration. It noted the applicant's heavy burden in that regard, as "[b]y their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character" (quoting In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 U.S.P.Q. 417, 424 (Fed. Cir. 1985)).

The TTAB was not persuaded by the applicant's evidence, and held that the applicant failed to meet its heavy burden to prove acquired distinctiveness. The Board noted that (1) the black boxes in the advertising and promotional materials submitted included source-indicating material other than the color of the boxes shown; (2) while the applicant had used "look for" statements, it had done so only for one year, and many of the Web viewers noted were outside that time period; and (3) the applicant did not submit evidence as to the scope of distribution of the materials. Moreover, the four consumer statements the applicant submitted suffered in part because of the flaws listed directly above, and in part because of the very small number of consumers and the lack of evidence of geographic diversity.

In sum, the TTAB upheld the examiner's refusal to register the color black for flower boxes, affirming refusal on the basis both of aesthetic functionality and of failure to establish acquired distinctiveness.

The case is newsworthy because it demonstrates the kind of scrutiny the TTAB will give to evidence of aesthetic functionality for color marks, such that registration may be difficult or barred even if an applicant can show the necessary secondary meaning and lack of utilitarian functionality.

Published in The Trademark Reporter

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