In Trademark Law, It’s Not Easy Being Green

Recent decision highlights challenges in registering color

In the words of noted philosopher Kermit the Frog, it’s not that easy being green.

PT Medisafe Technologies, a manufacturer of disposable gloves, recently found this out the hard way. In a precedential decision, the U.S. Federal Circuit Court of Appeals rejected Medisafe’s trademark application, holding that the shade of dark green the company sought to register is generic for chloroprene medical examination gloves.

It was the first time the Federal Circuit weighed in on how to determine whether a color is generic, and therefore unable to be registered. The decision highlights the challenges of registering color and how applicants might seek greener pastures.

In 2018, Medisafe filed an application to register the color green for use in connection with medical examination gloves. The application was later amended to specify that the color was dark green (Pantone 3285 c). Medisafe claimed that it had used the color mark in U.S. commerce as early as 1999.

Over the course of nearly three years, Medisafe challenged refusals to register on the grounds that the mark was not distinctive for the goods or was generic. Eventually, Medisafe appealed to the Trademark Trial and Appeal Board, which held that the claimed color was generic for chloroprene medical examination gloves. Alternatively, even if the color was not generic, the Board found that Medisafe had not shown that it had acquired distinctiveness.

A mark by any other name

Section 14 of the U.S. Trademark Law states that a registration can be cancelled “[a]t any time if the registered mark becomes the generic name for the goods or services” (emphasis added). One of Medisafe’s arguments on appeal was that color could not be a generic “name.”

Color is considered a type of trade dress. In order to register trade dress, the USPTO considers both whether the claimed trade dress is functional and whether it is sufficiently distinctive to identify the source of the goods or services. The functionality inquiry looks to whether the color provides a utilitarian advantage, like orange for traffic signs.

Functionality was not an issue in the Mediscape case, which hinged upon distinctiveness. Unlike word marks, which are viewed along a continuum of generic, descriptive, suggestive, arbitrary, and fanciful, a single color is never inherently distinctive. A color mark needs additional proof of the public’s perception of its distinctiveness.

In 2020, the Trademark Trial and Appeal Board found a color – red for saw blades – to be generic. In that case, Milwaukee Electric Tool Corp., which itself sold red saw blades, challenged a registration owned by Freud America. Citing evidence of many companies offering red saw blades, the Board held that the color was “so common that it cannot identify a single source.”

In the recent Medisafe decision, the Federal Circuit adopted the TTAB’s test established in Milwaukee for whether a color is generic:

[W]e [(i)] first consider the genus of goods or services at issue, and [(ii)] second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services (emphasis added).

The Milwaukee test is a slight variation on the existing test for genericism. Normally, courts and the USPTO consider the “term sought to be registered.” Under the modified test, “term” is replaced with “color.” For Medisafe, that change was a sticking point. It argued that a color could never be a category or type of goods.

The Federal Circuit disagreed, citing a prior case that held that a “generic name” prohibited by U.S. Trademark Law “must be read expansively to encompass anything that has the potential but fails to serve as an indicator of source, such as names, words, symbols, devices, or trade dress.”

The court then adopted the TTAB’s finding that the genus of the goods was “chloroprene medical examination gloves.” Citing evidence of a number of third parties selling such gloves the same or a very similar color, the Federal Circuit also upheld the TTAB finding that the color was generic for the goods.

Outside the green zone

It’s been thirty years since the U.S. Supreme Court held that a color alone can be registered as a trademark. Coincidentally, that case also involved green – a “special shade of green-gold” used on pads used for dry-cleaning presses. Still, it remains challenging to register a single color.

In the musical “Wicked,” green witch Elphaba sang, “I’m through with playing by the rules of someone else’s game.” But a company that wants to register a single-color mark unfortunately doesn’t have that luxury. It should keep in mind certain color-specific considerations, such as:

• A single color cannot be inherently distinctive;
• The applicant must be prepared to show the context of the color’s use and evidence of public perception;
• The color must be described specifically in the application.

The Federal Circuit’s recent decision held that Medisafe’s dark green was generic for chloroprene medical gloves. But the USPTO has given green marks the red light for other reasons, including:

The TTAB upheld the refusal of Starbucks’ application to register “a green circle placed centrally on the front exterior side of a white cup” for coffee and other beverages, along with restaurant services, finding that Starbucks had not proved acquired distinctiveness.

Although fashion company Benetton had presented evidence of long use, its registration for a green rectangle was refused because the design had not been used, promoted, or advertised as a trademark.

TD Bank was not able to register a credit card with rounded corners with green applied to the edge of the card. The company abandoned the application when it did not respond to an office action finding that the claimed mark was a “non-distinctive color mark … that would not be perceived as a service mark but only as decoration or ornamentation.”

In contrast, Deere & Company, the maker of John Deere farm machinery, owns a number of registrations covering its bright green and bright yellow color scheme for various goods. In fact, a federal district court held in 2017 that the green and yellow color combination is famous based on extensive evidence. Other green trademark owners may be green with envy, but it is less challenging to register a multiple-color mark.

While Elphaba once wished that the Wizard of Oz would “de-greenify” her, Kermit concluded green is “what I want to be.” But though it might not be easy being green – and we think Yoda, Shrek, and the Hulk might concur – trademark registration can be complicated no matter what the color.

About the Author: Suzi Morales is a writer and editor specialising in IP. She previously practised IP law, including trade mark prosecution and all types of IP litigation, for 15 years. Learn more about Suzi’s work at www.suzimorales.com/intellectual-property-law-marketing