Moldex has been producing foam ear plugs with a specific bright green color. Since the beginning of its business in 1982 it has sold over 1.6 billion pairs of them. It does not have a federal registration of its green color but it initiated a law suit against the defendant, McKeon in the present case after it began selling similar coloured ear plugs. Both the parties filed for summary judgments and the district court granted it in favour of McKeon.

McKeon claims the green colour to be a functional part of the product. The district court held that the colour of the plug was essential "to increase visibility and facilitate safety compliance checks" and thus it is essential to the use of the ear plug. It fulfils the test set in Qualitex and TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).


The court in the present case discussed the issue of functionality.

Under the Lanham Act, unregistered trade dress is also protected. However, no protection is granted if the mark is functional. Thus, if a person seeks protection for an unregistered trade dress must prove that the same is not functional. "Functional features of a product are features which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product." Disc Golf, 158 F. 3d at 1006.

The Supreme Court has previously held that colour can also be protected as a trade mark as sometimes the colour neither forms an essential aspect of a product's use nor does it affects its quality or cost whatso ever.

In the present case the District court observed that the green colour of the plug was "essential" for the purpose of ear plugs as it allows it to be seen during safety compliance checks, making it functional.

There are essentially two steps of determining aesthetic functionality of a product- First is the Inwood test (focusing on the function of the mark) which has been mentioned before; and second is the Qualitex test which is an inquiry with respect to the feature of a mark and whether granting protection to it would impose a significant non-reputation-related competitive disadvantage. Basically, the test provides that in cases where the colour of a mark serves a function, the courts must examine whether that feature, colour in this case, would be a disadvantage to the competition in the market.

In the present case the Court acknowledged that the Inwood test could not be applied to the Moldex's green color.

The Court agreed to Moldex's claim that- "there are hundreds of other available colors that could accomplish the goal of making the ear plugs visible during safety compliance checks. Thus, an ear plug manufacturer prohibited from selling Moldex's green shade would still be able to compete in the marketplace". On basis of this it remanded the district court to consider the functionality of the mark in light of Qualitex test.

Caution! Colours Can Be The Functional Part Of A Product

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