Color Marks, Inherent and Acquired Distinctiveness, and Lessons From Fruity Pebbles

Director Monica Riva Talley and Counsel Lauriel F. Dalier presented the webinar “Color Marks, Inherent and Acquired Distinctiveness, and Lessons From Fruity Pebbles,” hosted by Strafford. This CLE webinar guided IP counsel on color marks and how the Trademark Trial and Appeal Board (TTAB) and the courts have treated color marks. The speakers discussed proving distinctiveness and demonstrating that color is not functional as well as offering best practices for protecting color marks.

Description

Color has often confounded trademark practitioners. In January 2024, in a precedential decision, the TTAB affirmed the denial of Post Foods’ application to register a color mark for its fruity, colorful pebbles. In In re Post Foods L.L.C. (TTAB Jan. 4, 2024) the Board noted that under Qualitex v. Jacobson Products (U.S. 1995) color marks can never be inherently distinctive. Post Foods needed to demonstrate its mark had acquired distinctiveness.

In 2020, the Federal Circuit issued a precedential opinion in In re Forney Industries Inc., in which the court held color marks can be inherently distinctive when used on product packaging even when the color mark is not defined by a peripheral shape or border.

One of the challenges facing IP counsel is proving that the color mark is not functional and also that it is distinctive. Despite the Federal Circuit’s ruling, showing distinctiveness remains a hurdle to getting trademark protection.

Watch the recording as our authoritative panel of IP attorneys examines color marks and how the TTAB and the courts have treated color marks. The panel also discussed proving distinctiveness and demonstrating that color is not functional. The panel offered some best practices for protecting color marks.

Outline

1. Recent TTAB and court treatment of color marks
2. Proving distinctiveness
3. Demonstrating color is not functional
4. Best practices for protecting color marks

Benefits

The panel reviewed these and other important questions:

• What lessons can be drawn from the TTAB’s decision in In re Post Foods L.L.C.?
• What steps can counsel take to demonstrate distinctiveness of a color mark?
• What approaches should counsel consider to register a color mark successfully?