Federal Circuit Establishes Standard for Whether Color Trademarks Are Generic
On April 29, 2025, the U.S. Court of Appeals for the Federal Circuit held what standard applies for determining whether color trademarks are generic. In the case In re: PT Medisafe Technologies, the Federal Circuit held that courts should use a two-step inquiry, which considers (1) the genus of the goods and services at issue, and (2) whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services.
The Federal Circuit adopted the above standard from the one proposed by the Trademark Trial and Appeal Board (TTAB) in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (T.T.A.B. Dec. 2, 2019). The Federal Circuit had not previously considered what standard should apply for color trademarks but found that the standard provided in Milwaukee was consistent with the Federal Circuit’s prior precedents, which applied to trademarks more generally. Under the more general standard, the Federal Circuit directed that courts consider “First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Thus, the TTAB in Milwaukee had merely slightly modified the second step of the inquiry to focus on the color at issue. The Federal Circuit also found that the Milwaukee standard was consistent with the language of the Lanham Act, rejecting the trademark applicant’s arguments to the contrary.
The Federal Circuit then applied the standard from Milwaukee to the case at hand in reviewing the TTAB’s decision to not register the dark green color for medical examination gloves, which PT Medisafe Technologies had applied to register. The Federal Circuit affirmed the TTAB’s decision that the color was generic.
- First, the Federal Circuit agreed with the TTAB that the genus should be defined generally as “chloroprene medical examination gloves,” whereas the applicant had advocated for a narrower definition that focused on such gloves “sold only to authorized retailers.” The Federal Circuit noted that the trademark application identified the goods as simply “[m]edical examination gloves,” and found that the applicant’s proposed definition would have improperly limited the universe to the applicant’s own products.
- Second, the Federal Circuit agreed with the TTAB that the color mark “is so common in the chloroprene medical examination glove industry that it cannot identify a single source,” and thus is generic. The TTAB had found that the “relevant public” included “all such people or businesses who do or may purchase chloroprene medical examination gloves.” The Federal Circuit found that there was substantial evidence supporting that the color was not associated with a single source, and thus was generic. For instance, the record included evidence of 10 unauthorized third-party uses.
In reviewing the evidence, the Federal Circuit placed little or no weight on declarations that the applicant had submitted, as well as a survey. With respect to the customer declarations, the TTAB had reasonably found that they were not sufficiently representative or convincing of the relevant consumer perception, given that there were only a few of them, and they were conclusory and identical. With respect to the survey, the Federal Circuit agreed with the TTAB’s decision to give it no weight as it was administered by the applicant’s counsel (as opposed to a survey expert); consisted of leading questions (e.g., “How long have you purchased the Medisafe dark green chloroprene glove, shown below?”); was sent to only six respondents, all of whom were part of the applicant’s established customer base; and only three of the respondents submitted responses (one of whom said she did not consider the color to be distinctive).
The In re: PT Medisafe Technologies decision confirms that color trademarks are treated similarly to other types of trademarks and must be assessed for genericness following a similar test. This means that it will be important for trademark applicants and potential plaintiffs to carefully consider how the genus, or category, of their goods or services is likely to be defined, and ensure that they police third-party uses within that category.
