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appealtrialpatenttrademark

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In re Forney Industries, Inc., 955 F.3d 940

Facts

Forney Industries, Inc. sought to register a multi-color trademark for its packaging used in welding tools, which included a gradient of red fading into yellow with a black bar. The United States Patent and Trademark Office's Trademark Trial and Appeal Board initially refused the application, asserting that the proposed mark could never be inherently distinctive. Forney appealed this decision, arguing that its mark should be recognized as inherently distinctive trade dress.

Issue

Whether Forney's proposed multi-color mark is capable of being inherently distinctive.

Rule

A trademark can be inherently distinctive if its intrinsic nature serves to identify a particular source of a product. The determination of inherent distinctiveness is a factual question, while the legal standard for assessing it is reviewed de novo. Trade dress, which includes the total image of a product, can be registered as a trademark if it serves the same source-identifying function as a trademark. Color marks can be inherently distinctive when used on product packaging, depending on the character of the color design.

Analysis

The court found that the Board erred in its conclusion that a multi-color mark could never be inherently distinctive. It emphasized that the inherent distinctiveness of a color mark depends on whether consumers would associate the color feature with the source of the goods. The court noted that the proposed mark's unique color combination and design could potentially indicate the source of the goods to consumers, thus satisfying the criteria for inherent distinctiveness.

We conclude that the Board erred in finding that a proposed product packaging mark consisting of multiple colors is not capable of being inherently distinctive. Board Op. at *4. As a source indicator, Forney's multi-color product packaging mark is more akin to the mark at issue in Two Pesos than those at issue in Qualitex and Wal-mart.

Conclusion

The court vacated the Board's decision and remanded the case for further proceedings to assess whether Forney's proposed mark is inherently distinctive.

We vacate the Board's decision and remand for proceedings consistent with this opinion.

Who won?

Forney Industries, Inc. prevailed in this case as the court found that the Board's reasoning was flawed. The court clarified that a multi-color mark used on product packaging could be inherently distinctive, contrary to the Board's assertion. This ruling allows Forney to have its trademark application reconsidered under the correct legal standards, potentially leading to the registration of its mark.

Forney Industries, Inc. prevailed in this case as the court found that the Board's reasoning was flawed.

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