In a recent legal challenge, Medisafe Technologies encountered a significant setback in its attempt to secure a trademark for a distinctive color mark. The Federal Circuit upheld the ruling by the Trademark Trial and Appeal Board (TTAB), which found the proposed dark green color for medical examination gloves too generic to qualify for trademark registration.
Understanding the Case
Medisafe sought to register a specific shade of dark green, identified as Pantone 3285 c, for its medical examination gloves. The United States Patent and Trademark Office (PTO) initially rejected this application, deeming the color insufficiently distinctive. Medisafe appealed this decision, arguing that their color mark had acquired distinctiveness through use.
Legal Framework: The Milwaukee Test
The court's analysis was guided by the two-step Milwaukee test to determine whether a color mark is generic or has achieved distinctiveness.
Step One: Identifying the Genus of Goods
The court first identifies the relevant genus of goods. In this case, it was chloroprene medical examination gloves. Medisafe attempted to limit this genus to gloves sold by authorized resellers, but the court rejected this narrower definition, emphasizing that the broader industry context is crucial.
Step Two: Public Perception
The second step involves assessing whether the relevant public perceives the color as a common trade dress for the identified genus of goods. If consumers associate the color with the category of goods rather than the specific brand, the mark is deemed generic and unprotectable.
Application to Medisafe's Case
Applying this test:
Relevant Genus: The TTAB and Federal Circuit agreed that chloroprene medical examination gloves were the relevant genus. They cited examples from third-party sellers using "the same or nearly the same dark green color" under different trademarks, reinforcing the broader industry usage.
Public Perception: Both courts found that the dark green color was widely recognized as a standard feature of these gloves. Consumers encountering similar colors couldn't reliably identify Medisafe as the source, fulfilling the criteria for genericness.
Implications for Businesses
This case underscores the challenges in obtaining trademark protection for colors commonly used in an industry. Distinctive branding requires more than mere color choice, it demands evidence of sustained use and recognition in the market.
Businesses should consider strategic branding that combines unique elements, such as shape or design, with a distinctive color, ensuring that the overall visual identity is sufficiently distinct to avoid genericity.
The Role of IP Defender
In light of these challenges, businesses must adopt proactive measures to safeguard their intellectual property. IP Defender, a leading trademark monitoring service, helps companies monitor national trademark databases for potential conflicts and infringements in real time.
Using cutting-edge technologies like AI and machine learning, IP Defender ensures that your trademarks remain protected and distinct. By continuously tracking trademark applications and registrations across jurisdictions, IP Defender can alert you to potential issues before they escalate into costly disputes or legal battles.
Conclusion
The Medisafe case serves as a stark reminder for businesses aiming to trademark colors. While color alone can be a powerful brand element, it's not enough on its own. Companies must focus on building comprehensive, multi-element brands to secure robust intellectual property rights in today's competitive landscape.
By leveraging IP Defender, businesses can stay ahead of trademark threats and maintain the protection of their valuable assets.