No mark too unboxed to arm with a registration

In these fairly wretched times, hurray for a few things: You can now embed LinkedIn posts (that was fast!); Julie Zerbo has redesigned The Fashion Law, which now makes it the most best true blog about fashion law and much else; and a new post by her, embedded, as I said, below, about an important new decision involving those important new things: Non-traditional marks; specifically, color marks; in particular, color marks of many colors.

And, as it turns out, many shapes. Or no shapes. Okay, so the Federal Circuit decision in In re Forney Industries, itself, which you can read in full here — hurray for that too? Hurray, right?

Well. Let’s start with Julie’s blurb and post:

Okay, so, as we see, the TTAB got two things wrong, says the CAFC.

On the first point, the Board found, and the PTO contends, that Supreme Court case law, “make[s] clear that color, whether used on a product or its packaging, can never be inherently distinctive.” We disagree. 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. . . .

While it is true that “color is usually perceived as ornamentation,” In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), a distinct color-based product packaging mark can indicate the source of the goods to a consumer, and, therefore, can be inherently distinctive.

This seems like a big point, and I have no trouble following. The CAFC explains that the TTAB failed to observe the, um, distinction between product configuration — pretty much never distinctive, whether the mark claimed is color or otherwise — and product packaging:

As a source indicator, Forney’s multi-color product 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 [Supreme] Court described as potential source identifiers. Supreme Court precedent simply does not support the Board’s conclusion that a product packaging mark based on color can never be inherently distinctive.

That, I got. But here’s the other thing the Board got wrong, says the CAFC. And I am afraid it may presage the shape of things to come in trademark… or, perhaps, the lack of them:

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 conjunction with a distinctive peripheral shape or border. . . .

Nothing in the case law mandates such a rule.

No? Well, let’s see.

It is not that hard to imagine that the PTO wanted to keep color trademarks “in the box.” Specifically, it was concerned with the box shown below, the Forney tradebox, you might say, which is no box at all but rather a notional box suggested, social-distancing-like, by a series of dashes. From the opinion:

So, what is with the dashes? In PTO practice, just as in shop class, a box made of dotted lines is a box whose lines are not really there, and neither is the box. They and the box are … imaginary. They are there to tell you about the world outside the shop drawing or the trademark specimen — to provide context.

Oh, man, he said context.

Yup. So, appropriately, as you can see from the excerpt from the CAFC opinion above, the box o’ dashes shown in the specimen is not part of the description of the Forney mark. It merely contains it, albeit not very well for something described as “product packaging.”

That’s the whole point, right? Well no, there are no specific points, but you are supposed to get the point. Thus:

The question the Board must answer is whether, as used on [Forney’s] product packaging, the combination of colors and the design those colors create are sufficiently indicative 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 Nutritionals, LLC v. Heartland Sweeteners LLC, 566 F. Supp. 2d 378, 390 (E.D. Pa. 2008) (court must look to overall combination 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 distinctive).

And here I will say that those who expect the PTO to think outside of the box may be on the wrong side of the dotted lines, because it seems as if that is exactly what the PTO tried to do here — consider the outside of the box, or the absence of any conception of where that outside might be.

The CAFC explains it all, see — if only you will see!

But hold on. I hear the TTAB asking a very understandable question here. “Based on that broken-line specimen, why, those colors could just be… anywhere,” “The box may represent some imaginary containing an infinite possibility of squares, but which square is it? Or… isn’t it?

“Your colors go anywhere? Anything? And they’ll always be a trademark? That can’t be right!”

To which the Federal Circuit answers, no, it can be. It is right; four rights — right angles, that is — and that is quite enough for Forney to form a presumptive right to exclude others from using those colors for whatever it is that Forney sells.

What else should be the case in a world of pure imagination? Where else should trademark registrations exist and be enforceable against schmucks who think they know where a registrant’s presumptive rights begin and end?

Got that? Read the quotes again from McNeil, Letica and McCarthy. A color trademark doesn’t have to be a “specific peripheral shape or border,” not at all. What it does have to be is “used in a conjunction with a particular geometric pattern” or “confined to or create[] a defined design.”

Now, look. I think what the CAFC means is this: Yes, the cases do say that, to be inherently distinctive, a color combination does have to be used in some semblance of a coherent way delimited by more than wavelength. Yes, there has to be some form to how these colors are deployed. The exact parameters of that limit, however, do not have to be determined in advance. Sometimes the color combination will be used in a square. Sometimes it will be in a rectangle. Maybe another time the colors may be deployed along the edge of the product packaging, and they may or may not work as indications of origin. We see this all the time in creative branding.

And when that inherently distinctive combination in a box of make-believe points is deployed all over the damned place? Is there any end to the scope of protection for this “product packaging” delimited by dashes, or not?

Well, it’s not all that hard. Get a grip. Whatever form the complained-of use takes will have to be measured, for purposes of enforcement, against the standard of whether “the overall combination of elements” on “the packaging identifies the products as originating with a known source.”

If it does that thing, as embodied in the offering of the junior user, why there’s your ex parte TRO and if it’s bad enough, maybe there’s even attorneys’ fees. If not, why… well, how big a company is the plaintiff, again?

The main thing is that Forney is now a REGISTRANT. What could go wrong?

Lawyers' entrance, Moynihan Courthouse
Court: A serious business

Look. It’s the 21st century. We want to give trademark room to breathe. Air — that’s what the space between all those dashes is for. Alternative trademarks exist and are defined in alternative space, and that’s beautiful.

OK, true, we enforce them in very square spaces.

But it’s not such a big deal. Enforceability of the mark, once registered and entitled to presumptive validity notwithstanding its fuzzy dimensions, will be on a case-by-case basis. Which is always true, after all. There is vagueness, yes, but that will be the problem of the registrant, on whom the uber-heavy burden of proof lies. All the registration does is give Forney a teeny-tiny little boost to protect its, uh, goodwill — which we can’t exactly define, of course, in a concrete way. But that’s why we have injunctions, or something.

I guess I do see your … points. If you frame them that way.