Case: 19-1073    Document: 46     Page: 1   Filed: 04/08/2020




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

         IN RE: FORNEY INDUSTRIES, INC.,
                       Appellant
                ______________________

                        2019-1073
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Trademark Trial and Appeal Board in No.
 86/269,096.
                  ______________________

                   Decided: April 8, 2020
                  ______________________

     WILLIAM W. COCHRAN, II, Cochran Freund & Young,
 LLC, Fort Collins, CO, argued for appellant. Also repre-
 sented by JAMES R. YOUNG.

    MARY BETH WALKER, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, ar-
 gued for appellee Andrei Iancu. Also represented by
 THOMAS L. CASAGRANDE, CHRISTINA J. HIEBER, THOMAS W.
 KRAUSE, JOSEPH MATAL.
                 ______________________

     Before DYK, O’MALLEY, and CHEN, Circuit Judges.
 O’MALLEY, Circuit Judge.
     Forney Industries, Inc. (“Forney”) appeals from a deci-
 sion of the Trademark Trial and Appeal Board (“the
 Board”) which affirmed the trademark examining
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 2                            IN RE: FORNEY INDUSTRIES, INC.



 attorney’s refusal to register Forney’s proposed mark on
 grounds that the proposed mark is of a type that can never
 be inherently distinctive. In Re Forney Indus., Inc., 2018
 WL 4348337 (T.T.A.B. Sept. 10, 2018) (“Board Op.”). Be-
 cause the Board erred by holding that: (1) a multi-color
 mark can never be inherently distinctive, and (2) product
 packaging marks that employ color cannot be inherently
 distinctive in the absence of a well-defined peripheral
 shape or border, we vacate and remand for further proceed-
 ings.
                       I. BACKGROUND
     Forney sells accessories and tools for welding and ma-
 chining in packaging that displays its proposed mark,
 shown below:




     On May 1, 2014, Forney filed Trademark Application
 No. 86/269,096 for its proposed mark for packaging for var-
 ious welding and machining goods based on use in com-
 merce under Section 1(a) of the Lanham Act, 15 U.S.C.
 § 1051(a). Forney sought to register the mark without
 showing acquired distinctiveness. In its application, For-
 ney identified its mark as a “color mark” and, as to the col-
 ors claimed, noted that “[t]he colors black, yellow and red
 is/are claimed as a feature of the mark.” Joint Appendix
 (“J.A.”) 23. Forney described its mark as follows: “[t]he
 mark consists of a solid black stripe at the top. Below the
 solid black stripe is the color yellow which fades into the
 color red. These colors are located on the packaging and or
 labels.” Id.
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 IN RE: FORNEY INDUSTRIES, INC.                            3



     In an Office Action dated September 16, 2014, the ex-
 amining attorney refused registration under Sections 1, 2,
 and 45 of the Lanham Act because the mark “is not inher-
 ently distinctive.” Id. at 39. The examining attorney noted
 that “[s]uch marks are registrable only on the Supple-
 mental Register or on the Principal Register with sufficient
 proof of acquired distinctiveness.” Id. The examining at-
 torney requested, inter alia, a revised drawing depicting a
 single three-dimensional view of the goods or packaging
 showing those features that Forney claimed as its mark,
 and a revised color claim and mark description. Id. at 40–
 41. The Office Action also noted that the colors in Forney’s
 submitted drawing differ from those in the color claim and
 mark description, noting that Forney’s submitted drawing
 shows the color orange but the description omits reference
 to that color. Id. at 41.
      In response, Forney revised the mark description as
 follows: “The mark consists of the colors red into yellow
 with a black banner located near the top as applied to pack-
 aging for the goods. The dotted lines merely depict place-
 ment of the mark on the packing backer card.” J.A. 66. On
 May 14, 2015, the examining attorney again refused to reg-
 ister Forney’s proposed trademark, stating that the mark
 was not inherently distinctive, and should be registrable
 only on the Supplemental Register, or, on the Principal
 Register with sufficient proof of acquired distinctiveness.
 Id. at 75.
     Forney appealed this decision to the Board, arguing
 that its proposed mark should be treated as product pack-
 aging claiming multiple colors. Board Op. at *2. According
 to Forney, its proposed mark is “product packaging trade
 dress that may be inherently distinctive and, therefore,
 registrable without proof of acquired distinctiveness.” Id.
      The Board affirmed the examining attorney’s refusal to
 register, treating the proposed mark as a color mark con-
 sisting of multiple colors applied to product packaging.
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 4                            IN RE: FORNEY INDUSTRIES, INC.



 Relying on the Supreme Court’s decisions in Two Pesos,
 Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), Qualitex Co.
 v. Jacobson Prod. Co., 514 U.S. 159 (1995), and Wal-Mart
 Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), the Board
 found that, when assessing marks consisting of color, there
 is no distinction between colors applied to products and col-
 ors applied to product packaging. Board Op. at *3. The
 Board acknowledged that, under Two Pesos, trade dress
 can be inherently distinctive, although the decision “is si-
 lent” on how to determine inherent distinctiveness of trade
 dress. Id. at *4. Further, the Board acknowledged that,
 under Qualitex, color applied to a product may serve as a
 trademark upon a showing of acquired distinctiveness. Id.
 According to the Board, Wal-Mart “clarifies that, while cer-
 tain types of product packaging may be inherently distinc-
 tive source indicators, a color mark, that is a mark
 consisting of color—whether applied to a product or its
 packaging—is not among them.” Id. at *5. The Board con-
 cluded that “Wal-Mart and Qualitex together make clear
 that ‘a particular color on a product or its packaging’ . . .
 can never be inherently distinctive and may only be regis-
 tered on a showing of acquired distinctiveness.” Id. (citing
 Wal-Mart, 529 U.S. at 212).
     Turning to Forney’s mark, the Board found “no legal
 distinction between a mark consisting of a single color and
 one, such as [Forney’s], consisting of multiple colors with-
 out additional elements, e.g., shapes or designs.” Id. at *6.
 According to the Board, Forney had not “attempted to com-
 bine its color mark with a uniform shape, pattern, or other
 distinctive design.” Id. Contradicting its earlier finding
 that “a color mark consisting of multiple colors applied to
 product packaging is not capable of being inherently dis-
 tinctive,” the Board then held that a color mark consisting
 of color applied to product packaging cannot be inherently
 distinctive in the absence of an association with a well-de-
 fined peripheral shape or border. Id. at *3, *6 (citing For-
 ney Indus., Inc. v. Daco of Missouri, Inc., 835 F.3d 1238,
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 IN RE: FORNEY INDUSTRIES, INC.                             5



 1250 (10th Cir. 2016)). Apparently applying that standard,
 the Board found Forney’s mark not inherently distinctive.
 Id. Forney timely appealed. We have jurisdiction under
 28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a)(1).
     We address in turn both of the Board’s findings: (1) that
 a color mark can never be inherently distinctive in the
 trade dress context and (2) that, even if a color mark could
 be inherently distinctive, it cannot be absent a well-defined
 peripheral shape or border. Board Op. at *6.
                       II. DISCUSSION
     We review the TTAB’s legal conclusions de novo and its
 findings of fact for substantial evidence. Real Foods Pty
 Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 971 (Fed. Cir.
 2018). “The issue of inherent distinctiveness is a factual
 determination made by the [B]oard.” Hoover Co. v. Royal
 Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001).
 The correct standard to apply in determining inherent dis-
 tinctiveness, however, is a legal question, which we review
 de novo. In re Chippendales USA, Inc., 622 F.3d 1346, 1350
 (Fed. Cir. 2010).
                              A.
     A trademark includes “any word, name, symbol, or de-
 vice, or any combination thereof” used by any person “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[.]” 15 U.S.C. § 1127.
 Trade dress constitutes a “symbol” or “device” by which the
 goods of the applicant may be distinguished from the goods
 of others. Wal-Mart, 529 U.S. at 210–11. Trade dress “in-
 volves the total image of a product and may include fea-
 tures such as size, shape, color or color combinations,
 texture, graphics, or even particular sales techniques.”
 Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1578 (Fed.
 Cir. 1995) (internal quotations and citation omitted).
 Trade dress is registrable as a trademark if it serves the
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 6                            IN RE: FORNEY INDUSTRIES, INC.



 same source-identifying function as a trademark. Marks
 are entitled to protection if they are inherently distinctive,
 i.e., “their intrinsic nature serves to identify a particular
 source of a product.” Two Pesos, 505 U.S. at 768. Thus, a
 product’s trade dress is protectable upon a showing of in-
 herent distinctiveness. And if not inherently distinctive,
 marks may be protectable if they acquire distinctiveness,
 i.e., if they “become distinctive of the applicant’s goods in
 commerce.” 15 U.S.C. § 1052(e), (f). 1
     We find that the Board erred in two ways: (1) by con-
 cluding that a color-based trade dress mark can never be
 inherently distinctive without differentiating between
 product design and product packaging marks; and (2) by
 concluding (presumably in the alternative) that product
 packaging marks that employ color cannot be inherently
 distinctive in the absence of an association with a well-de-
 fined peripheral shape or border.
     On the first point, the Board found, and the PTO con-
 tends, that Supreme Court case law, “make[s] clear that
 color, whether used on a product or its packaging, can
 never be inherently distinctive.” Appellee’s Br. 11. We dis-
 agree. We do not believe that, to date, the Supreme Court
 has gone as far as the Board did here, where the mark is
 proposed for product packaging, as distinct from product
 design.
     For the reasons explained below, we hold that color
 marks can be inherently distinctive when used on product
 packaging, depending upon the character of the color de-
 sign. As the Supreme Court has made clear, inherent dis-
 tinctiveness turns on whether consumers would be
 predisposed to “equate the [color] feature with the source.”
 Wal-Mart, 529 U.S. at 211. While it is true that “color is



     1   Acquired distinctiveness is commonly referred to
 as “secondary meaning.”
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 IN RE: FORNEY INDUSTRIES, INC.                              7



 usually perceived as ornamentation,” In re Owens-Corning
 Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), a dis-
 tinct color-based product packaging mark can indicate the
 source of the goods to a consumer, and, therefore, can be
 inherently distinctive.
                              B.
     Neither the Supreme Court, nor this court, has directly
 addressed whether a multi-color mark applied to product
 packaging can be inherently distinctive. The Supreme
 Court has, however, provided several data points on inher-
 ent distinctiveness of trade dress that inform our inquiry.
 In Two Pesos, the Supreme Court held that inherently dis-
 tinctive trade dress is entitled to protection without a
 showing of secondary meaning. 505 U.S. at 776. The trade
 dress at issue in that case comprised:
     a festive eating atmosphere having interior dining
     and patio areas decorated with artifacts, bright col-
     ors, paintings and murals. The patio includes inte-
     rior and exterior areas with the interior patio
     capable of being sealed off from the outside patio by
     overhead garage doors. The stepped exterior of the
     building is a festive and vivid color scheme using
     top border paint and neon stripes.
 Id. at 765. Notably, the question of whether the particular
 trade dress in that case was inherently distinctive was not
 before the Court. The Court “assume[d], without deciding”
 that the trade dress was inherently distinctive. Id. at 770.
 Thus, Two Pesos stands merely for the proposition that
 trade dress can be inherently distinctive.
     Subsequently, in Qualitex, the Court considered
 whether a single “special shade of green-gold color” on a
 dry-cleaning pad was protectable trade dress. 514 U.S. at
 161. The Court held that “there is no rule absolutely bar-
 ring the use of color alone” as a trade dress. Id. at 162. The
 Court found no “obvious theoretical objection to the use of
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 8                            IN RE: FORNEY INDUSTRIES, INC.



 color alone as a trademark, where that color has attained
 ‘secondary meaning’ and therefore identifies and distin-
 guishes a particular brand (and thus indicates its ‘source’).”
 Id. at 163.
      Although Qualitex implied that a showing of acquired
 distinctiveness may be required before a trade dress mark
 based on color alone can be protectable, it did not expressly
 so hold. The Court returned to these issues in Wal-Mart.
 There, the Court differentiated between two types of pro-
 posed trade dress marks—product design and product
 packaging marks. In discussing a product design mark, the
 Court held that, “with respect to at least one category of
 mark—colors—we have held that no mark can ever be in-
 herently distinctive.” 529 U.S. at 211–212 (citing Qualitex,
 at 162–163). The Court went on to state that “design, like
 color, is not inherently distinctive.” Id. at 212. In reaching
 this conclusion, the Court considered the fact that “product
 design almost invariably serves purposes other than source
 identification.” Id. at 213. The Court also distinguished
 the respondent’s trade dress at issue in that case (garment
 design) from the décor of a restaurant at issue in Two Pe-
 sos:
     [T]he decor of a restaurant, seems to us not to con-
     stitute product design. It was either product pack-
     aging—which, as we have discussed, normally is
     taken by the consumer to indicate origin—or else
     some tertium quid that is akin to product packag-
     ing and has no bearing on the present case.
 Id. at 215. And, the Court noted, “[t]he attribution of in-
 herent distinctiveness to certain categories of . . . product
 packaging derives from the fact that the very purpose of . . .
 encasing [a product] in a distinctive packaging, is most of-
 ten to identify the source of the product.” Id. at 212.
    With these guideposts in mind, we turn to the issue at
 hand. We conclude that the Board erred in finding that a
 proposed product packaging mark consisting of multiple
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 IN RE: FORNEY INDUSTRIES, INC.                             9



 colors is not capable of being inherently distinctive. Board
 Op. at *4. As a source indicator, Forney’s multi-color prod-
 uct packaging mark is more akin to the mark at issue in
 Two Pesos than those at issue in Qualitex and Wal-mart.
 Indeed, it falls firmly within the category of marks the
 Court described as potential source identifiers. Supreme
 Court precedent simply does not support the Board’s con-
 clusion that a product packaging mark based on color can
 never be inherently distinctive.
     Indeed, we have addressed the implications of the key
 Supreme Court cases in this area before and held that “in
 Wal-Mart, the Court merely held that product design trade
 dress can never be inherently distinctive, and can only
 qualify for protection through acquired distinctiveness.”
 Chippendales, 622 F.3d at 1357 (citing Wal-mart, 529 U.S.
 at 214–15). As we said there, “[n]othing in the Wal–Mart
 decision questioned or undermined” our established case
 law regarding the circumstances under which a proposed
 product packaging mark may be deemed inherently dis-
 tinctive. Id. at 1358 (citing Seabrook Foods, Inc. v. Bar-
 Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977)).
     We are not the only court to conclude that color marks
 on product packaging can be inherently distinctive. In con-
 sidering a mark very similar to the one at issue here, the
 Tenth Circuit held that “the use of color in product packag-
 ing can be inherently distinctive (so that it is unnecessary
 to show secondary meaning)” in appropriate circum-
 stances. Forney Indus., Inc. v. Daco of Missouri, Inc., 835
 F.3d 1238, 1248 (10th Cir. 2016).
     Forney’s proposed mark comprises the color red fading
 into yellow in a gradient, with a horizontal black bar at the
 end of the gradient. It is possible that such a mark can be
 perceived by consumers to suggest the source of the goods
 in that type of packaging. Accordingly, rather than
 blanketly holding that “[c]olors alone cannot be inherently
 distinctive,” Board Op. at *7, the Board should have
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 10                           IN RE: FORNEY INDUSTRIES, INC.



 considered whether Forney’s mark satisfies this court’s cri-
 teria for inherent distinctiveness.
                              C.
     We now turn to the Board’s alternative conclusion and
 assess whether it comports with our holding here and in
 our prior case law. We conclude that it does not. Without
 explaining why it was doing so, the Board found that a color
 may only be inherently distinctive when used in conjunc-
 tion with a distinctive peripheral shape or border.
     While the PTO attempts to now characterize the
 Board’s test as less demanding (see Oral Arg. at 21:14–
 22:23), available at http://oralarguments.cafc.uscourts.gov
 /default.aspx?fl=2019-1073.MP3), that effort is belied by
 the result the Board actually reached here. The Board’s
 judgment rests either on its erroneous view that color
 marks can never be inherently distinctive or on the errone-
 ous requirement that a color mark must be associated with
 a specific peripheral shape or border in order to be inher-
 ently distinctive. Nothing in the case law mandates such
 a rule.
      In determining the inherent distinctiveness of trade
 dress, the question to be answered is whether the trade
 dress “makes such an impression on consumers that they
 will assume” the trade dress is associated with a particular
 source. Seabrook, 568 F.2d at 1344. To assess that ques-
 tion, the Board must look to the following factors:
 (1) whether the trade dress is a “common” basic shape or
 design; (2) whether it is unique or unusual in the particular
 field; (3) whether it is a mere refinement of a commonly-
 adopted and well-known form of ornamentation for a par-
 ticular class of goods viewed by the public as a dress or or-
 namentation for the goods; or, inapplicable here,
 (4) whether it is capable of creating a commercial impres-
 sion distinct from the accompanying words. Id. (collecting
 cases). These factors are all different ways to determine
 whether it is reasonable to assume that customers in the
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 IN RE: FORNEY INDUSTRIES, INC.                            11



 relevant market will perceive the trade dress as an indica-
 tor of origin.
      Here, Forney is correct that its proposed mark is not
 just a “color mark,” but also a “symbol.” Appellant’s Br. 22.
 Forney is not attempting to preempt the use of the colors
 red, yellow, and black, but instead seeks to protect only the
 particular combination of these colors, arranged in a par-
 ticular design, as shown in the drawing submitted for its
 proposed mark. See Oral Arg. 8:03–8:09 (“[The Court:] And
 the . . . visual depiction of the mark governs rather than
 the verbal description, right? [Counsel for Appellant:]
 Yes.”). The question the Board must answer is whether, as
 used on its product packaging, the combination of colors
 and the design those colors create are sufficiently indica-
 tive of the source of the goods contained in that packaging.
 And the Board must assess that question based on the
 overall impression created by both the colors employed and
 the pattern created by those colors. See, e.g., McNeil Nu-
 tritionals, LLC v. Heartland Sweeteners LLC, 566 F. Supp.
 2d 378, 390 (E.D. Pa. 2008) (court must look to overall com-
 bination of elements to determine whether the packaging
 identifies the products as originating with a known source);
 Letica Corp. v. Sweetheart Cup Co., 805 F. Supp. 482, 489
 (E.D. Mich. 1992) (“[w]hile the combination of two colors by
 itself may not be distinctive, a color combination used in
 conjunction with a particular geometric pattern can be a
 valid trademark.”); see also McCarthy on Trademarks and
 Unfair Competition § 7:45 (5th ed.) (where color is confined
 to or creates a defined design, it can be inherently distinc-
 tive).
     We conclude that the Board erred in stating that a
 multi-color product packaging mark can never be inher-
 ently distinctive. To the extent the Board’s decision sug-
 gests that a multi-color mark must be associated with a
 specific peripheral shape in order to be inherently distinc-
 tive, that too, was error. Accordingly, we vacate and re-
 mand for the Board to consider, whether, for the uses
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 12                          IN RE: FORNEY INDUSTRIES, INC.



 proposed, Forney’s proposed mark is inherently distinctive
 under the Seabrook factors, considering the impression cre-
 ated by an overall view of the elements claimed. 2
                       III. CONCLUSION
      For the reasons explained, we vacate the Board’s deci-
 sion and remand for proceedings consistent with this opin-
 ion.
                  VACATED AND REMANDED
                            COSTS
      No costs.




      2  We take no position on whether Forney’s use of the
 mark in commerce, as shown by its submitted specimens,
 is consistent. As the parties themselves recognize, that is-
 sue is not before us, and is properly considered by the ex-
 amining attorney in the first instance. See Oral Arg. at
 4:22–5:25; see also Appellee’s Br. 5 n.3.
