Colors Need Patterns To Make TMs ‘Distinctive”: 10th Circ.


Colors Need Patterns To Make TMs "Distinctive": 10th Circ.

Courts may find the use of color in a product's packaging to be "inherently distinctive" for trademark purposes only if specific colors are combined with a well-defined pattern, shape or design. The Tenth Circuit held Monday in a published opinion involving the packaging for a Colorado company's metalworking products.  A color scheme is not distinctive on its own, held the appellate court panel in its opinion on the packaging for Forney Industries Inc.'s products, basing its determination in part on U.S. Supreme Court precedent that a product's color is not inherently distinctive and that litigation over the legal question should be kept to a minimum.

The Tenth Circuit upheld a lower court's determination that the combination of red, yellow, white and black used in Forney's packaging is neither inherently disctinctive nor has acquired a "secondary meaning" that would lead the public to associate it with the company rather than with defendant Daco of Missouri Inc.'s products and packaging, according to the panel.

The Tenth  Circuit determined that Forney's packaging has varied so many times over the years that the company cannot claim to have an inherently distinctive design worthy of trademark protection under the Lanham Act, according to the opinion.

"Forney has used the combination of red, yellow, white and black in such diverse ways that there is no consistent shape, pattern or design we can discern from its description of its mark or from the examples abut applying vague, litigation-friendly tests for inherent distinctiveness, we conclude that Forney has failed to establish an inherently distinctive trade dress."

Forney filed the infringement suit against Daco in October 2013, alleging that its Missouri-based rival violated the Lanham Act and various Colorado state laws by packaging its "Hot Max" products with a set of colors Forney had long used, according to the May 2015 order by the District of Colorade granting Daco's motion to dismiss.

Counself for the parties could not be reached for comment on Monday.

U.S. Circuit Judges Harris L. Hartz, David M. Ebel and Nancy L. Moritz sat on the panel for the Tenth Circuit.

Forney is represented by William W. Cochran of Cochran Freund & Young and Christopher Benson.

Daco is representated by Jack D. Robinson of Spies Powers & Robinson PC.

The case is Forney Industries Inc. v. Daco of Missouri Inc. d/b/a KDAR Co., case number 15-1226, before the U.S. Court of Appeals for the Tenth Circuit.

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