CAFC Affirms TTAB’s Genericness Test for Color Marks

Image taken from CAFC opinion.

On Tuesday, April 29, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in In re: PT Medisafe Technologies affirming the Trademark Trial and Appeal Board’s (TTAB’s) application of its test for genericness in color marks. Finding both that the TTAB’s inquiry properly aligned with Federal Circuit precedent on generic marks and that the TTAB’s finding was supported by substantial evidence, the appellate court rejected Medisafe’s challenges to the rejection of its trademark application claiming the color dark green for the surface of chloroprene examination gloves.

Milwaukee Test for Color Marks is Entirely Consistent With H. Marvin Ginn’s Genericness Inquiry

Upon initial review of Medisafe’s trademark application, the U.S. Patent and Trademark Office (USPTO) trademark examiner found that Medisafe’s claimed mark was generic despite a declaration from Medisafe’s Executive Vice President, promotional literature and color advertisements within the industry. Medisafe appealed the examiner’s rejection to the TTAB, which affirmed after applying a version of the two-step generic inquiry laid out by the Federal Circuit in H. Marvin Ginn v. International Association of Fire Chiefs (1986), which first looks at the genus of goods or services at issue, and then asks whether the claimed mark is understood by the relevant public to primarily refer to that genus.

The TTAB’s test for color marks, slightly altered from H. Marvin Ginn, first appeared in the Board’s 2019 decision in Milwaukee Electric Tool Corp. v. Freud America. Applying the test, the TTAB first rejected Medisafe’s proposed genus of gloves sold to authorized resellers, finding the relevant public to be all potential consumers of chloroprene medical examination gloves. At the second step, the TTAB found that Medisafe’s claimed green color couldn’t identify a sole source, noting website screenshots including green gloves that Medisafe did not purport to manufacture. The TTAB also rejected several pieces of evidence on nongenericness submitted by Medisafe, including survey evidence to which the Board gave no probative weight.

On appeal to the Federal Circuit, Medisafe challenged both the TTAB’s legal standard for assessing genericness in color marks, as well as the evidence underpinning the Board’s findings. Acknowledging that H. Marvin Ginn had not expressly considered color marks in its genericness analysis, the Federal Circuit nonetheless found the TTAB’s variations in Milwaukee Electric Tool to be appropriate. The test in H. Marvin Ginn applies to marks regardless of type, the Federal Circuit noted, adding that “[t]he Milwaukee test is entirely consistent with H. Marvin Ginn.”

Section 1064(3)’s “Generic Name” Provision Does Not Prevent Genericness of Color Marks

Medisafe argued that the Milwaukee test ignores statutory language codified at 15 U.S.C. § 1064(3), which governs the cancellation of registered marks at any time they become a “generic name.” According to Medisafe, this “generic name” requirement meant that the allegedly generic color must be a “name” for the goods or services used. The Federal Circuit had previously rejected this line of reasoning in Sunrise Jewelry Manufacturing Corp. v. Fred S.A. (1999), which involved the registration of a nautical rope design for clocks and watches. Dismissing arguments that trade dress could not be a “generic name” under Section 1064(3), the Federal Circuit held in Sunrise Jewelry that the provision must be read expansively to encompass anything that has the potential to be a source indicator. As it ruled in Sunrise Jewelry, the Federal Circuit said that following Medisafe’s reasoning would afford more protection under the Lanham Act to a color mark than a word mark, undermining the Act’s purpose.

The Federal Circuit also held that the TTAB’s findings when applying the Milwaukee test were supported by substantial evidence. The Board’s rejection of Medisafe’s narrowed relevant public of authorized glove resellers was appropriate given the fact that Medisafe’s original application sought to register the color for “[m]edical examination gloves,” with later amendments limiting the claimed goods to those “sold only to authorized resellers.” Further, the TTAB’s finding that green was so common in the relevant industry that it cannot identify a sole source was supported by the website screenshots showing green gloves from unaffiliated sellers. The Federal Circuit also agreed that several flaws existed in Medisafe’s customer declarations and consumer survey, the latter of which relied upon leading questions and was only answered by three respondents, one of whom said that Medisafe’s green gloves were not distinctive within the industry.

While a color mark can serve as a source identifier, the Federal Circuit found that Medisafe failed to make its required showing that consumers perceive dark green to indicate Medisafe as the sole source of chloroprene medical examination gloves. The court thus affirmed, agreeing that Medisafe’s proposed mark is ineligible for entry on either the principal or supplemental registers.