The U.S. Supreme Court’s recent decision not to review Medisafe’s petition has reignited discussions about the legal standards for evaluating color trademarks under the Lanham Act. Central to the dispute is a pivotal question: Can a single color qualify as a trademark if it lacks inherent distinctiveness?
Medisafe attempted to register dark green as a trademark for chloroprene medical examination gloves. The U.S. Patent and Trademark Office (USPTO) rejected the application, asserting that the color was generic - a term in trademark law that denotes a designation that merely describes a product or service. Medisafe contested this ruling, arguing that the color’s usage in the industry was not widespread enough to render it unprotectable. The Trademark Trial and Appeal Board (TTAB) affirmed the USPTO’s position, applying a two-step test from H. Marvin Ginn v. International Association of Fire Chiefs (1986).
The first step requires identifying the relevant consumer base, which the TTAB defined as all potential users of medical gloves, not just authorized resellers. The second step evaluates whether the color primarily identifies the product’s category. In Medis,afe’s case, the TTAB concluded that green was too prevalent in the industry to serve as a source identifier. Evidence from unaffiliated sellers offering green gloves further supported this determination.
Medisafe’s challenge centers on 15 U.S.C. § 1064(3), which permits the cancellation of registered marks that become “generic names.” The company argues that the Federal Circuit misinterpreted this provision, conflating color with a name. In Sunrise Jewelry Manufacturing Corp. v. Fred S.A. (1999), the Federal Circuit rejected a similar argument, broadening the definition of “generic name” to include any potential source indicator. Medisafe contends this interpretation creates an imbalance, favoring color marks over word marks.
The Federal Circuit’s support for the TTAB’s findings highlights the tension between trademark protection and consumer perception. While the TTAB’s test prioritizes objective evidence of common usage, critics argue it neglects subjective factors like brand recognition. For businesses, this ambiguity presents risks: a color that satisfies one criterion may fail another, leaving trademark owners exposed to cancellation.
The case also underscores the lack of uniformity among federal circuits. While the Second and Third Circuits have ruled that the genericness inquiry does not apply to product design trade dress, the Federal Circuit’s approach remains contested. This fragmentation complicates trademark strategy, requiring companies to navigate a patchwork of legal standards.
For businesses, the implications are clear: trademark monitoring must be rigorous. A color that appears distinctive today may become generic tomorrow, undermining its legal protection. As the Medisafe case illustrates, the boundary between a trademark and a generic term is often indistinct, demanding vigilance in both registration and ongoing compliance.
The Supreme Court’s refusal to intervene leaves the Federal Circuit’s interpretation intact, but the debate over color trademarks shows no signs of abating. As legal standards evolve, businesses must balance innovation with the need to secure and maintain their intellectual property rights.