“Doctor, what does ‘green’ mean to you? Environmental sustainability? Envy? Inexperience? How about a particular U.S. brand of medical examination glove??” PT Medisafe Technologies (Indonesia) would like you to answer “Yes!” to that last question, and as a supplier of examination gloves to the medical field, PT Medisafe claims a particular shade of green as their trademark. The USPTO, on the other hand, doesn’t believe that it’s even possible for Medisafe green to be recognized as a brand, and PT Medisafe has given notice that they are taking the fight to the Federal Circuit U.S. Court of Appeals.

The ground rules for claiming the color of a product as a trademark were set by the U.S. Supreme Court in 1995, when it decided that the color of a product could serve as a trademark. The Court did not make enforcement of rights in a color mark easy: it said that a color mark is not like an inherently distinctive fanciful, arbitrary or even ‘suggestive’ word mark (i.e., a functional indicator of the source of a product). In contrast, the color of a product inherently lacks significance as an indicator of the source of a product, at least when first introduced to the public. Therefore, a seller trying to enforce trademark rights in the color of a product bears a burden of proof to show that that color has attained “secondary meaning” (a.k.a., “acquired distinctiveness”), i.e., that consumers have learned to associate products of the claimed color with a brand. Accordingly, the USPTO requires that applicants seeking to register a color mark on the Principal Register show that the color has attained secondary meaning. For example, ABM International, Inc. obtained a registration for the color red for its sewing machine bobbins on the Principal Register after the USPTO asserted that the mark belonged on the Supplemental Register, by responding to the refusal with evidence of acquired distinctiveness. More famously, Christian Louboutin included with his application, evidence that the color red on the soles of his shoes had acquired distinctiveness, and his application was granted to the Principal Register.

Proving that an otherwise indistinct mark has secondary meaning can be a difficult task and may be impossible for a product color newly introduced to the marketplace. U.S. trademark law, however, provides a path for registration without such proof: marks that lack secondary meaning can be registered on a Supplemental Register, if they have the potential to acquire secondary meaning, and do not conflict with other marks, etc.

For example, an application filed by VaproShield, LLC to register the color red as a mark for roof liner membranes on the Principal Register was initially refused for lack of acquired distinctiveness, but VaproShield amended the application to the Supplemental Register, and the registration was granted since it did not conflict with any earlier mark.

Like a number of competitors in the medical glove field, PT Medisafe applied to register the color of their gloves, but PT Medisafe went into the USPTO looking for a fight: their initial application sought registration on the Principal Register for a mark described as “the color green as applied to the entire surface of the goods which consist of chloroprene examination gloves.” The USPTO initially signaled a willingness to consider registration on the Supplemental Register, provided that PT Medisafe could overcome an apparent conflicts with both an earlier registration and a prior pending application, either of which would block the PT Medisafe registration under Section 2(d) of the Trademark Act.

The registration blocking ‘Medisafe green’ was Reg.no. 5278439 of Avent, Inc. (Supplemental Register), for the color green Pantone 7488U as a mark for “protective gloves for medical use.” The earlier application of Medline Industries, LP, matured into Reg.no. 6060639 (Supplemental Register) for the color green Pantone 2274C as a mark for “medical examination gloves.”

It is worth noting that Medline, like PT Medisafe, was initially refused registration due to likelihood of confusion with the Avent registration. However, Medline overcame that refusal by pointing out that the Medline green (Pantone 2274C) is different from the Avent green (Pantone 7488U). Medline argued successfully that “many third parties use different shades of green for medical gloves” and that in such a crowded field, ‘customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other,’ (quoting from the renowned treatise by J. Thomas McCarthy).

PT Medisafe eventually overcame the 2(d) refusal by limiting their claim of green to Pantone 3285c, which is different from both Avent’s green (Pantone 7488U) and Medline’s green (Pantone 2274C). By that time, however, the USPTO Examining Attorney had looked more closely and took the position that not only did PT Medisafe’s green lack secondary meaning, they decided that the color is incapable of acquiring secondary meaning (i.e., that the color is “generic” for medical examining gloves) and is therefore ineligible for registration, even on the Supplemental Register.

PT Medisafe argued against the genericness issue and scored a small victory in limiting the “genus” of products for purposes of the analysis to chloroprene medical examination gloves, thus excluding vinyl, latex and nitrile gloves from consideration as to how common the color is used in the genus. The Examining Attorney was unmoved, and PT Medisafe took an appeal to the Trademark Trial and Appeals Board. At the end of a 48-page review of the arguments and evidence exchanged between PT Medisafe and the Examining Attorney, the Board concluded that the color dark green in a shade identical or similar to Pantone 3285c is so common in the chloroprene medical examination glove industry that it is generic and so cannot identify a single source; so the refusal of registration was affirmed. As a fallback, in case an appeal resulted in reversal of the finding of genericness, the Board agreed that the evidence submitted by PT Medisafe would not establish acquired distinctiveness, which would be necessary for registration to the Principal Register. PT Medisafe has filed notice of appeal to the Federal Circuit on Feb. 15, 2023.

The PT Medisafe tale and the registration by Medline reveal these valuable points for future claimants of color marks: First, if the applicant claiming a color mark is a newcomer to the market, it will not be able to show acquired distinctiveness, so the application should be directed to the Supplemental Register after use of the mark has been made (intent-to-use applications can only be directed to the Principal Register). Second, multiple shades of a product can coexist on the Supplemental Register in a ‘crowded field’, at least up to a point. Third, if a genericness issue arises, the applicant has a degree of control over defining the genus of products in which use of the color is by others is assessed, because the genus will be limited by the identification of goods in the application. These will all be handy strategies to keep in mind for future applications to register color marks.

   Frederick Spaeth

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.