## Facts

- Forney Industries sold welding and machining accessories using packaging featuring a color design with a solid black stripe at the top and yellow fading into red below.
- Forney applied to register the design as a color mark for its goods on the Principal Register based on use in commerce, without claiming acquired distinctiveness.
- A USPTO examining attorney refused registration on the ground that the proposed mark was not inherently distinctive and would require acquired distinctiveness (or placement on the Supplemental Register).
- The Trademark Trial and Appeal Board (TTAB) affirmed, concluding that multi-color marks applied to product packaging are never inherently distinctive and, in any event, cannot be inherently distinctive without a well-defined peripheral shape or border.
- Forney appealed to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether a multi-color mark applied to product packaging is categorically incapable of inherent distinctiveness and therefore registrable only upon proof of acquired distinctiveness.
2. Whether a product-packaging color mark must be tied to a well-defined peripheral shape or border to qualify as inherently distinctive.
3. What standard governs the inherent-distinctiveness inquiry for color-based trade dress on product packaging.

## Decision

- The Federal Circuit vacated the TTAB’s refusal and remanded.
- The court held that a multi-color mark used on product packaging is not per se barred from being inherently distinctive.
- The court held that a product-packaging color mark need not be associated with a well-defined peripheral shape or border to be inherently distinctive.
- The court directed the TTAB to assess inherent distinctiveness under the Seabrook factors, considering the overall commercial impression of the packaging design.

## Legal Principles

- Product-packaging trade dress, unlike product-design trade dress, may be inherently distinctive and registrable without proof of acquired distinctiveness.
- There is no categorical rule that color (including multiple colors) used on product packaging can function only upon a showing of secondary meaning.
- Inherent distinctiveness for a packaging design should be evaluated under the Seabrook framework, including whether the design is common in the field, unique or unusual, a refinement of common ornamentation, or otherwise creates a distinct commercial impression.
- A requirement that a color mark on packaging be confined within a particular peripheral shape or border is not a prerequisite to inherent distinctiveness; the focus is consumer perception of the overall appearance as a source indicator.

## Conclusion

The Federal Circuit rejected per se TTAB rules that multi-color packaging marks cannot be inherently distinctive and that such marks require a defined border, vacating the refusal and remanding for a fact-specific Seabrook analysis of the claimed packaging color design.


In re Forney Industries, Inc., 955 F.3d 940 (Fed. Cir. 2020)