CAFC affirms TTAB’s Genericness test for color marks
“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.”
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. The TTAB affirmed the rejection after applying a version of a two-step generic inquiry laid down by the Federal Circuit in H. Marvin Ginn v. International Association of Fire Chiefs, (1986), where the Federal Circuit first examines the genus of the goods or services in question, and then asks if the claimed mark is understood primarily by the relevant public as referring to that genus. The TTAB rejected Medisafe’s proposed genus for gloves sold to authorized resellers. It found that the relevant public was all potential chloroprene medical exam gloves consumers. The TTAB also rejected several pieces of evidence Medisafe submitted on nongenericness, including survey evidence that the Board did not consider probative. The TTAB rejected Medisafe’s evidence of nongenericness, including survey evidence, which it did not consider probative. The Federal Circuit acknowledged that H. Marvin Ginn did not explicitly consider color marks in its analysis of genericness, but found the TTAB variations in Milwaukee Electric Tool appropriate. The test in H. Marvin Ginn applies to marks regardless of type, the Federal Circuit noted, adding that “
he Milwaukee test is entirely consistent with H. Marvin Ginn.”
Section 1064(3)’s “Generic Name” Provision Does Not Prevent Genericness of Color Marks[t]Medisafe argued that the Milwaukee test ignores statutory language codified at 15 U.S.C. Medisafe argued that the Milwaukee test ignores statutory language codified at 15 U.S.C. In Sunrise Jewelry Manufacturing Corp. V. Fred S.A., (1999), the Federal Circuit had rejected this line in reasoning. This case involved the registration of nautical rope designs for clocks and watch. The Federal Circuit rejected arguments that trade dress was not a “generic term” under Section 1064(3). In Sunrise Jewelry, the Federal Circuit held that the provision should be read broadly to include anything that could be a source indication. The Federal Circuit also ruled that the TTAB’s findings in applying the Milwaukee test are supported by substantial evidence. The Board’s rejection was justified, given that Medisafe originally sought to register a color for “
edical Examination Gloves,” with later amendments limiting claimed goods to “only authorized resellers.” Website screenshots of green gloves from non-affiliated sellers also supported the TTAB finding that green is so common in relevant industry that it can’t identify a single source. 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 affirmed that Medisafe’s proposed trademark is not eligible for entry on the principal or supplemental registrations.
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual
