Color as a Trademark? Not Always
Trademark protection for color is not a new concept—but that does not mean every use of color qualifies for legal protection. The recent decision in In re PT Medisafe Technologies serves as a timely reminder of just how difficult it can be to register color marks, particularly in industries where certain colors are functional, commonly used, or fail to indicate source.
In this case, the U.S. Court of Appeals for the Federal Circuit upheld the decision by the Trademark Trial and Appeal Board (TTAB) to deny registration of a dark green color mark for medical examination gloves. The ruling reinforces the notion that color marks are subject to the same “genericness” analysis as word marks and other forms of trade dress under the Lanham Act.
Background: A Bid for Color Protection in the Medical Field
PT Medisafe Technologies, a manufacturer of chloroprene medical gloves, applied to register the dark green color (Pantone 3285 C) as a trademark. The USPTO’s examining attorney refused registration, finding that the color lacked inherent distinctiveness and that PT Medisafe had failed to establish acquired distinctiveness. The examining attorney also concluded that the color was generic for the goods.
TTAB and Federal Circuit Decisions
On appeal, the TTAB applied a modified version of the two-part test from H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., as adapted for color marks in Milwaukee Electric Tool Corp. v. Freud America, Inc. The test asks:
What is the genus of goods or services at issue?
Is the feature (here, color) understood by the relevant public to primarily refer to that genus of goods or services?
The TTAB concluded that the genus was all chloroprene medical examination gloves, and that the relevant public included all purchasers of such gloves. Based on the record, the Board found that dark green was commonly used in the industry and did not function as a source identifier. The applicant's evidence—such as declarations and consumer survey results—was found to be insufficient to prove secondary meaning.
The Federal Circuit affirmed, agreeing that the dark green color was generic for the applied-for goods. Notably, the court held that even non-verbal elements like color can be considered generic if they fail to function as trademarks. It also rejected PT Medisafe’s argument that the term “generic name” in the Lanham Act excluded color marks from a genericness finding, citing established precedent treating trade dress and other non-traditional marks in the same analytical framework.
TTAB and Federal Circuit Decisions
On appeal, the TTAB applied a modified version of the two-part test from H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., as adapted for color marks in Milwaukee Electric Tool Corp. v. Freud America, Inc. The test asks:
What is the genus of goods or services at issue?
Is the feature (here, color) understood by the relevant public to primarily refer to that genus of goods or services?
The TTAB concluded that the genus was all chloroprene medical examination gloves, and that the relevant public included all purchasers of such gloves. Based on the record, the Board found that dark green was commonly used in the industry and did not function as a source identifier. The applicant's evidence—such as declarations and consumer survey results—was found to be insufficient to prove secondary meaning.
The Federal Circuit affirmed, agreeing that the dark green color was generic for the applied-for goods. Notably, the court held that even non-verbal elements like color can be considered generic if they fail to function as trademarks. It also rejected PT Medisafe’s argument that the term “generic name” in the Lanham Act excluded color marks from a genericness finding, citing established precedent treating trade dress and other non-traditional marks in the same analytical framework.
The key takeaways appear to be that color alone can function as a trademark, but only when it serves as a source identifier and is not functional, commonly used, or generic for the goods. Applicants seeking to register a color mark face a high evidentiary bar, especially in industries where color is used for standardization, function, or aesthetics. Of this to say that the case reinforces that trade dress elements, including color, are not immune from genericness analysis under the Lanham Act.
For brand owners exploring non-traditional marks—especially color—it is essential to carefully assess whether the proposed mark is truly distinctive in the eyes of consumers. As In re PT Medisafe Technologies shows, not all shades stand out in the eyes of the law.
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