TRADEMARK LAW DECIDED CASE: Qualitex Co. v. Jacobson Products Co. Supreme Court of the United States 514 U.S. 159 (1995) FACTS OF THE CASE: JUSTICE BREYER delivered the opinion of
TRADEMARK LAW
DECIDED CASE: Qualitex Co. v. Jacobson Products Co.
Supreme Court of the United States
514 U.S. 159 (1995)
FACTS OF THE CASE:
JUSTICE BREYER delivered the opinion of the Court.
The question in this case is whether the Trademark Act of 1946 (Lanham Act) permits the registration of a
trademark that consists, purely and simply, of a color. We conclude that, sometimes, a color will meet
ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone
from serving as a trademark.
I
The case before us grows out of petitioner Qualitex Company’s use (since the 1950’s) of a special shade of
green-gold color on the pads that it makes and sells to dry cleaning firms for use on dry cleaning presses.
In 1989, respondent Jacobson Products (a Qualitex rival) began to sell its own press pads to dry cleaning
firms; and it colored those pads a similar green-gold. In 1991, Qualitex registered the special green-gold
color on press pads with the Patent and Trademark Office as a trademark. Registration No. 1,633,711
(Feb. 5, 1991). Qualitex subsequently added a trademark infringement count to an unfair competition
claim in a lawsuit it had already filed challenging Jacobson’s use of the green-gold color.
Qualitex won the lawsuit in the District Court. But, the Court of Appeals for the Ninth Circuit set aside
the judgment in Qualitex’s favor on the trademark infringement claim because, in that Circuit’s view, the
Lanham Act does not permit Qualitex, or anyone else, to register “color alone” as a trademark. This Court
granted certiorari. We now hold that there is no rule absolutely barring the use of color alone, and we
reverse the judgment of the Ninth Circuit.
II
The Lanham Act gives a seller or producer the exclusive right to “register” a trademark and to prevent his
or her competitors from using that trademark. Both the language of the Act and the basic underlying
principles of trademark law would seem to include color within the universe of things that can qualify as a
trademark. The language of the Lanham Act describes that universe in the broadest of terms. It says that
trademarks “include any word, name, symbol, or device, or any combination thereof.” Since human beings
might use as a “symbol” or “device” almost anything at all that is capable of carrying meaning, this
language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized
for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC’s three chimes),
and even a particular scent (of plumeria blossoms on sewing thread). If a shape, a sound, and a fragrance
can act as symbols why, one might ask, can a color not do the same?
A color is also capable of satisfying the more important part of the statutory definition of a trademark,
which requires that a person “use” or “intend to use” the mark “to identify and distinguish his or her
goods, including a unique product, from those manufactured or sold by others and to indicate the source
of the goods, even if that source is unknown.” True, a product’s color is unlike “fanciful,” “arbitrary,” or
“suggestive” words or designs, which almost automatically tell a customer that they refer to a brand.
Qualitex Co. v. Jacobson Prods. Co.
Abercrombie & Fitch Co. v. Hunting World, Inc. The imaginary word “Suntost,” or the words “Suntost
Marmalade,” on a jar of orange jam immediately would signal a brand or a product source; the jam’s
orange color does not do so. But, over time, customers may come to treat a particular color on a product
or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or
red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to
identify and distinguish the goods — i.e., “to indicate” their “source” — much in the way that descriptive
words on a product (say, “Trim” on nail clippers or “Car-Freshner” on deodorizer) can come to indicate a
product’s origin. In this circumstance, trademark law says that the word (e.g., “Trim”), although not
inherently distinctive, has developed “secondary meaning.” See Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844 (1982) (“Secondary meaning” is acquired when “in the minds of the
public, the primary significance of a product feature is to identify the source of the product rather than the
product itself.”). Again, one might ask, if trademark law permits a descriptive word with secondary
meaning to act as a mark, why would it not permit a color, under similar circumstances, to do the same?
We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of
color alone as a trademark, where that color has attained secondary meaning and therefore identifies and
distinguishes a particular brand (and thus indicates its source). In principle, trademark law, by preventing
others from copying a source-identifying mark, reduces the customer’s costs of shopping and making
purchasing decisions, for it quickly and easily assures a potential customer that this item — the item with
this mark — is made by the same producer as other similarly marked items that he or she liked (or
disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating
competitor) will reap the financial, reputation-related rewards associated with a desirable product. The
law thereby encourages the production of quality products and simultaneously discourages those who
hope to sell inferior products by capitalizing on a consumer’s inability quickly to evaluate the quality of an
item offered for sale. It is the source-distinguishing ability of a mark — not its ontological status as color,
shape, fragrance, word, or sign — that permits it to serve these basic purposes. And, for that reason, it is
difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of a colo r as a
mark.
Neither can we find a principled objection to the use of color as a mark in the important “functionality”
doctrine of trademark law. The functionality doctrine prevents trademark law, which seeks to promote
competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature. It is the province of patent law, not trademark law, to
encourage invention by granting inventors a monopoly over new product designs or functions for a
limited time, after which competitors are free to use the innovation. If a product’s functional features could
be used as trademarks, however, a monopoly over such features could be obtained without regard to
whether they qualify as patents and could be extended forever (because trademarks may be renewed in
perpetuity). Functionality doctrine therefore would require, to take an imaginary example, that even if
customers have come to identify the special illumination-enhancing shape of a new patented light bulb
with a particular manufacturer, the manufacturer may not use that shape as a trademark, for doing so, after
the patent had expired, would impede competition — not by protecting the reputation of the original bulb
maker, but by frustrating competitors’ legitimate efforts to produce an equivalent illumination-enhancing
bulb. See, e.g., Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938) (trademark law cannot be used
to extend monopoly over “pillow” shape of shredded wheat biscuit after the patent for that shape had
expired). This Court consequently has explained that, “in general terms, a product feature is functional,”
and cannot serve as a trademark, “if it is essential to the use or purpose of the article or if it affects the cost
Qualitex Co. v. Jacobson Prods. Co.
or quality of the article,” that is, if exclusive use of the feature would put competitors at a significant non –
reputation-related disadvantage. Inwood Laboratories, Inc. Although sometimes color plays an important
role (unrelated to source identification) in making a product more desirable, sometimes it does not. And,
this latter fact — the fact that sometimes color is not essential to a product’s use or purpose and does not
affect cost or quality — indicates that the doctrine of functionality does not create an absolute bar to the
use of color alone as a mark. See Owens-Corning, 774 F.2d at 1123 (pink color of insulation in wall
“performs no non-trademark function”).
It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as
a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without
serving any other significant function. Indeed, the District Court, in this case, entered findings (accepted
by the Ninth Circuit) that show Qualitex’s green-gold press pad color has met these requirements. The
green-gold color acts as a symbol. Having developed secondary meaning (for customers identified the
green-gold color as Qualitex’s), it identifies the press pads’ source. And, the green-gold color serves no
other function. (Although it is important to use some color on press pads to avoid noticeable stains, the
court found “no competitive need in the press pad industry for the green -gold color, since other colors are
equally usable.”) Accordingly, unless there is some special reason that convincingly militates against the
use of color alone as a trademark, trademark law would protect Qualitex’s use of the green-gold color on
its press pads.
III
Respondent Jacobson Products says that there are four special reasons why the law should forbid the use
of color alone as a trademark. We shall explain, in turn, why we, ultimately, find them unpersuasive.
First, Jacobson says that, if the law permits the use of color as a trademark, it will produce uncertainty and
unresolvable court disputes about what shades of a color a competitor may lawfully use. Because lighting
(morning sun, twilight mist) will affect perceptions of protected color, competitors and courts will suffer
from “shade confusion” as they try to decide whether use of a similar color on a similar product does, or
does not, confuse customers and thereby infringe a trademark. Jacobson adds that the “shade confusion”
problem is “more difficult” and “far different from” the “determination of the similarity of words or
symbols.”
We do not believe, however, that color, in this respect, is special. Courts traditionally decide quite
difficult questions about whether two words or phrases or symbols are sufficiently similar, in con text, to
confuse buyers. They have had to compare, for example, such words as “Bonamine” and “Dramamine”
(motion-sickness remedies); “Huggies” and “Dougies” (diapers); “Cheracol” and “Syrocol” (cough syrup);
“Cyclone” and “Tornado” (wire fences); and “Mattres” and “1-800-Mattres” (mattress franchisor
telephone numbers). Legal standards exist to guide courts in making such comparisons. We do not see
why courts could not apply those standards to a color, replicating, if necessary, lighting conditions under
which a colored product is normally sold. Indeed, courts already have done so in cases where a trademark
consists of a color plus a design, i.e., a colored symbol such as a gold stripe (around a sewer pipe), a
yellow strand of wire rope, or a “brilliant yellow” band (on ampules).
Second, Jacobson argues, as have others, that colors are in limited supply. Jacobson claims that, if one of
many competitors can appropriate a particular color for use as a trademark, and each competitor then tries
to do the same, the supply of colors will soon be depleted. Put in its strongest form, this argument would
Qualitex Co. v. Jacobson Prods. Co.
concede that “hundreds of color pigments are manufactured and thousands of colors can be obtained by
mixing.” But, it would add that, in the context of a particular product, only some colors are usable. By the
time one discards colors that, say, for reasons of customer appeal, are not usable, and adds the shades that
competitors cannot use lest they risk infringing a similar, registered shade, then one is left with only a
handful of possible colors. And, under these circumstances, to permit one, or a few, producers to use
colors as trademarks will “deplete” the supply of usable colors to the point where a competitor’s inability
to find a suitable color will put that competitor at a significant disadvantage.
This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a
blanket prohibition. When a color serves as a mark, normally alternative colors will likely be available for
similar use by others. See, e.g., Owens-Corning, 774 F.2d at 1121 (pink insulation). Moreover, if that is
not so — if a “color depletion” or “color scarcity” problem does arise — the trademark doctrine of
“functionality” normally would seem available to prevent the anticompetitive consequences that
Jacobson’s argument posits, thereby minimizing that argument’s practical force.
The functionality doctrine, as we have said, forbids the use of a product’s feature as a trademark where
doing so will put a competitor at a significant disadvantage because the feature is “essential to the use or
purpose of the article” or “affects its cost or quality.” Inwood Laboratories, Inc., 456 U.S. at 850, n. 10.
The functionality doctrine thus protects competitors against a disadvantage (unrelated to recognition or
reputation) that trademark protection might otherwise impose, namely their inability reasonably to
replicate important non-reputation-related product features. For example, this Court has written that
competitors might be free to copy the color of a medical pill where that color serves to identify the kind of
medication (e.g., a type of blood medicine) in addition to its source. See id., at 853, 858, n. 20 (“Some
patients commingle medications in a container and rely on color to differentiate one from another”). And,
the federal courts have demonstrated that they can apply this doctrine in a careful and reasoned manner,
with sensitivity to the effect on competition. Although we need not comment on the merits of specific
cases, we note that lower courts have permitted competitors to copy the green color of farm machinery
(because customers wanted their farm equipment to match) and have barred the use of black as a
trademark on outboard boat motors (because black has the special functional attributes of decreasing the
apparent size of the motor and ensuring compatibility with many different boat colors). The Restatement
(Third) of Unfair Competition adds that, if a design’s “aesthetic value” lies in its ability to “confer a
significant benefit that cannot practically be duplicated by the use of alternative designs,” then the design
is “functional.” Restatement (Third) of Unfair Competition § 17, Comment c, pp. 175-176 (1993). The
“ultimate test of aesthetic functionality,” it explains, “is whether the recognition of trademark rights would
significantly hinder competition.”
The upshot is that, where a color serves a significant nontrademark function – whether to distinguish a
heart pill from a digestive medicine or to satisfy the “noble instinct for giving the right touch of beauty to
common and necessary things” — courts will examine whether its use as a mark would permit one
competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or
potential exclusive use of an important product ingredient. That examination should not discourage firms
from creating esthetically pleasing mark designs, for it is open to their competitors to do the same. But,
ordinarily, it should prevent the anticompetitive consequences of Jacobson’s hypothetical “color
depletion” argument, when, and if, the circumstances of a particular case threaten “color depletion.”
Third, Jacobson points to many older cases — including Supreme Court cases — in support of its position.
These Supreme Court cases, however, interpreted trademark law as it existed before 1946, when Congress
Qualitex Co. v. Jacobson Prods. Co.
enacted the Lanham Act. The Lanham Act significantly changed and liberalized the common law to
“dispense with mere technical prohibitions,” most notably, by permitting trademark registration of
descriptive words (say, “U-Build-It” model airplanes) where they had acquired “secondary meaning.” The
Lanham Act extended protection to descriptive marks by making clear that (with certain explicit
exceptions not relevant here) “nothing shall prevent the registration of a mark used by the applicant which
has become distinctive of the applicant’s goods in commerce.”
This language permits an ordinary word, normally used for a nontrademark purpose ( e.g., description), to
act as a trademark where it has gained “secondary meaning.” Its logic would appear to apply to color as
well. Indeed, in 1985, the Federal Circuit considered the significance of the Lanham Act’s changes as they
related to color and held that trademark protection for color was consistent with the “jurisprudence under
the Lanham Act developed in accordance with the statutory principle that if a mark is capable of being or
becoming distinctive of the applicant’s goods in commerce, then it is capable of serving as a trademark.”
Owens-Corning, 774 F.2d at 1120.
This history undercuts the authority of the precedent on which Jacobson relies. Much of the pre-1985 case
law rested on statements in Supreme Court opinions that interpreted pre-Lanham Act trademark law and
were not directly related to the holdings in those cases. Moreover, we believe the Federal Circuit was right
in 1985 when it found that the 1946 Lanham Act embodied crucial legal changes that liberalized the law
to permit the use of color alone as a trademark (under appropriate circumstances). At a minimum, the
Lanham Act’s changes left the courts free to reevaluate the preexisting legal pre cedent which had
absolutely forbidden the use of color alone as a trademark. Finally, when Congress reenacted the terms
“word, name, symbol, or device” in 1988, it did so against a legal background in which those terms had
come to include color, and its statutory revision embraced that understanding.
Fourth, Jacobson argues that there is no need to permit color alone to function as a trademark because a
firm already may use color as part of a trademark, say, as a colored circle or colored letter or colored
word, and may rely upon “trade dress” protection, under § 43(a) of the Lanham Act, if a competitor copies
its color and thereby causes consumer confusion regarding the overall appearance of the competing
products or their packaging. The first part of this argument begs the question. One can understand why a
firm might find it difficult to place a usable symbol or word on a product (say, a large industrial bolt that
customers normally see from a distance); and, in such instances, a firm might want to use co lor, pure and
simple, instead of color as part of a design. Neither is the second portion of the argument convincing.
Trademark law helps the holder of a mark in many ways that “trade dress” protection does not. Thus, one
can easily find reasons why the law might provide trademark protection in addition to trade dress
protection.
IV
Having determined that a color may sometimes meet the basic legal requirements for use as a trademark
and that respondent Jacobson’s arguments do not justify a special legal rule preventing color alone from
serving as a trademark (and, in light of the District Court’s here undisputed findings that Qualitex’s use of
the green-gold color on its press pads meets the basic trademark requirements), we conclude that the
Ninth Circuit erred in barring Qualitex’s use of color as a trademark. For these reasons, the judgment of of the Ninth circuit is reversed.
QUESTIONS:
As we have seen, U.S. law allows for single-color marks. What about taste or flavors? In 2014, one pizza chain sued another, claiming infringement on the “distinctive trademark flavor of its products,” but the court rejected the claim.
1. )Might taste be a good candidate for an absolute bar against trademark protection?
Consider the arguments that were made in the Qualitex company v. Jacobson Product company against allowing single-color marks as well as the reasons that the Court rejected those arguments.
2. )Are those arguments more persuasive when it comes to taste?
3. )Can you think of how the trademark system might benefit from definitively barring taste marks?
4. Or should the possibility of a taste mark remain open?
ANSWER THE FOUR QUESTIONS AND PLEASE GIVE YOUR REFERENCE.
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