No. 93-1577

In the Supreme Court of the United States

OCTOBER TERM, 1994

QUALITEX COMPANY, PETITIONER

v\.

JACOBSON PRODUCTS CO., INC.

ON WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING PETITIONER

NANCY J. LINCK

Solicitor

ALBIN F. DROST

Deputy Solicitor

NANCY C. SLUTTER

Associate Solicitor

LINDA MONCYS ISACSON

Assistant Solicitor

Patent and

Trademark Office

Arlington, VA 22215

DREW S. DAYS, III

Solicitor General

FRANK W. HUNGER

Assistant Attorney General

ANNE K. BINGMAN

Assistant Attorney General

LAWRENCE G. WALLACE

Deputy Solicitor General

DIANE P. WOOD

Deputy Assistant Attorney

General

JAMES A. FELDMAN

Assistant to the Solicitor General

WILLIAM KANTER

MARC RICHMAN

DAVID SEIDMAN

Attorneys

Department of Justice

Washington, D.C. 20530

(202)514-2217

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QUESTION PRESENTED

Whether a color alone may be protected as a registered

trademark under the Lanham Act.

\(I\)

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TABLE OF CONTENTS

Page

Interest of the United States . . . . 1

Statement . . . . 2

Summary of argument . . . . 4

Argument:

Color alone may be protected as a trademark, so

long as the legal prerequisites to such protection

are satisfied . . . . 6

A. Color per se may satisfy all of the Lanham Act\'s

requirements for trademark protection . . . . 6

B. The Ninth Circuit\'s policy concerns do not war-

rant complete exclusion of color from trademark

protection . . . . 17

C. If this Court finds the statute ambiguous or

silent on the subject, deference should be given

to the PTO\'S interpretation of the Lanham Act . . . . 23

Conclusion . . . . 27

TABLE OF AUTHORITIES

Cases:

A. Leschen & Sons Rope Co. v. Broderick & Bascom

Rope Co., 201 U. S. 166 (1906) . . . . 19, 21

AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531 (11th

Cir. 1986), cert. denied, 481 U.S. 1041 (1987) . . . . 19

Amsted Indus., In re, 972 F.2d 1326 (Fed. Cir.

1992\) . . . . 17

Bose Corp., In re, 772 F.2d 866 (Fed. Cir. 1985) . . . . 13

Brunswick Corp. v. British Seagull Limited, Nos.

94-1049 & 94-1050 (Fed. Cir. Sept. 14, 1994) . . . . 14, 15, 18

Clarke, In re, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) . . . . 9

Cooper Indus., Inc. v. Channellock, Inc., 788 F.

Supp. 873 (W.D. Pa. 1992) . . . . 26

Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85

(S.D. Iowa 1982), aff\'d, 721 F.2d 253 (8th Cir.

1983\) . . . . 15

\(III\)

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IV

Cases-Continued:

Page

Diamond Match Co. v. Saginaw Match Co., 142

F. 727 (6th Cir. ), cert. denied, 203 U.S. 589

\(1906\) . . . . 13

Eagle Fence Rentals, Inc., In re, 231 U.S.P.Q. 228

(T.T.A.B. 1986) . . . . 26

Eastman Kodak Co. v. Bell & Howell Document

Mgmt. Prods. Co., 994 F.2d 1569 (Fed. Cir.

1993\) . . . . 24

Edward Week Inc. v. IM Inc., 17 U.S.P.Q.2d 1142

(T.T.A.B. 1990) . . . . 26

Electrolyte Laboratories, Inc., In re, 929 F.2d 645

(Fed. Cir. 1990) . . . . 19

Exxon Corp. v. Texas Motor Exchange of Houston,

Inc., 628 F.2d 500 (5th Cir. 1980) . . . . 19

Fotomat Corp. v. Ace Corp., 208 U.S.P.Q. 92 (S.D.

Calif. 1980) . . . . 8

General Electric Broadcasting Co., In re, 199

U.S.P.Q. 560 (T.T.A.B. 1978) . . . . 9

General Petroleum Corp., In re, 49 F.2d 966

(C.C.P.A. 1931) . . . . 21

Harold F. Ritchie, Inc. v. Chesebrough-Ponds, Inc.,

281 F.2d 755 (2d Cir. 1960) . . . . 19

Inwood Laboratories, Inc. v. Ives Laboratories,

Inc., 456 U.S. 844 (1982) . . . . 11, 13

Keene Corp. v. Paraflex Indus., Inc., 653 F.2d 822

(3d Cir. 1981) . . . . 15

Kotzin, In re, 276 F.2d 411 (C.C.P.A. 1960) . . . . 7

Lechmere, Inc. v. NLRB, 112 S. Ct. 841 (1992) . . . . 24

Master Distributors, Inc. v. Pako Corp., 986 F.2d

219 (8th Cir. 1993) . . . . 4, 17, 18, 19, 21

McDonald\'s Corp. v. McBagel\'s, Inc., 649 F. Supp.

1268 (S.D.N.Y. 1986) . . . . 19

Minnesota Mining & Mfg. Co., In re, 335 F.2d 836

(C.C.P.A. 1964) . . . . 8

Mogen David Wine Corp., In re, 328 F.2d 925

(C.C.P.A. 1964) . . . . 8

Morton-Norwich Prods., Inc., In re, 671 F.2d 1332

(C.C.P.A. 1982) . . . . 12

Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397

(8th Cir. 1987), cert. denied, 488 U.S. 933

\(1988\) . . . . 19

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V

Cases-Continued:

Page

National Railroad Passenger Corp. v. Boston &

Maine Corp., 112 S. Ct. 1394 (1992) . . . . 23, 24

Northwest Airlines, Inn. v. County of Kent, 114

S. Ct. 855 (1994) . . . . 24

NutraSweet Co. v. Stadt Corp., 917 F.2d 1024 (7th

Cir. 1990), cert. denied, 499 U.S. 983 (1991) . . . . 4, 18, 19

Owens-Corning Fiberglas Corp., In re:

221 U.S.P.Q. 1195 (T.T.A.B. 1984), rev\'d, 774

F.2d 1116 (Fed. Cir. 1985) . . . . 25, 26

774 F.2d 1116 (Fed. Cir. 1985) . . . . passim

Park \'N Fly, Inc. v. Dollar Park & Fly, Inc., 469

U.S. 189 (1985) . . . . l0, 15,24

Philco Corp. . Phillips Mfg. Co., 133 F.2d 663

(7th Cir. 1943) . . . . 22

Piper Aircraft Corp. v. Wag-Aero, Inc., 741 F.2d

925 (7th Cir. 1984) . . . . 19

Ritchie Mfg. Co., In re, 170 U.S.P.Q. 291 (T.T.A.B.

1971 ) . . . . 25

Scandinavia Belting Co. v. Asbestos & Rubber

Works of America, Inc., 257 F. 937 (2d Cir.),

cert. denied, 250 U.S. 644 (1919) . . . . 8

Security Engineering Co., In re, 113 F.2d 494

(C.C.P.A. 1940) . . . . 21

Shaw, In re, 184 U.S.P.Q. 253 (T.T.A.B. 1974) . . . . 25

Standard Oil Co. v. Standard Oil Co., 252 F.2d 65

(lOth Cir. 1958) . . . . 19

Swift & Co., In re, 223 F.2d 950 (C. C.P.A. 1955) . . . . 8, 11

Textron, Inc. v. United States Int\'l Trade Comm\'n,

753 F.2d 1019 (Fed. Cir. 1985) . . . . 12

Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct.

2753 (1992) . . . . l0, 12, 14

Vuitton et Fils S.A. v. J. Young Enterprises, 644

F.2d 769 (9th Cir. 1981) . . . . 11

William R. Warner & Co. v. Eli Lilly & Co., 265

U.S. 526 (1924) . . . . 8, 13

World Carpets, Inc. v. Dick Littrell\'s New World

Carpets, 438 F.2d 482 (5th Cir. 1971) . . . . 19

World\'s Finest Chocolate, Inc., In re, 474 F.2d

1012 (C.C.P.A. 1973) . . . . 8

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VI

Statutes:

Page

Lanham Act of 1946, ch. 540, 60 Stat. 427:

2, 60 Stat. 428 . . . . 22

45, 60 Stat. 443 . . . . 7, 22

Lanham Act, 15 U.S.C. 1051-1127 . . . . 1

2, 15 U.S.C. 1052 . . . . 6, 9, 10, 12, 16, 17

2(a), 15 U.S.C. 1052 (a) . . . . 9

2(b), 15 U.S.C. 1052 (b) . . . . 9

2(c), 15 U.S.C. 1052 (c) . . . . 9

2(d), 15 U.S.C. 1052 (d) . . . . 9

2(e), 15 U.S.C. 1052 (e) . . . . 9, 10

2(f), 15 U.S.C. 1052(f) . . . . 10, 11

7(b), 15 U.S.C. 1057 (b) . . . . 20, 24, 27

9(a), 15 U.S.C. 1059 (a) . . . . 13

12, 15 U.S.C. 1062 . . . . 24

15, 15 U.S.C. 1065 . . . . 20, 24

17, 15 U.S.C. 1067 . . . . 25

21, 15 U.S.C. 1071 . . . . 25

22, 15 U.S.C. 1072 . . . . 20

32(1), 15 U.S.C. 1114 (1) . . . . 2

32(1) (a), 15 U.S.C. 1114 (1) (a) . . . . 18

32(1) (b), 15 U.S.C. 1114 (1) (b) . . . . 18

42, 15 U.S.C. 1124 . . . . 20

43(a), 15 U.S.C. 1125 (a) . . . . 2, 17, 20

45, 15 U.S.C. 1127 . . . . 1, 4, 6, 8, 10, 12, 16

Trade Mark Act of 1905, ch. 592, 33 Stat. 724 . . . . 22

Trademark Law Revision Act of 1988, Pub. L. No.

100-667, Tit. 1, 102 Stat. 3935 . . . . 22

134(3), 102 Stat. 3947 . . . . 7

15 U.S.C. 81 et seg. (repealed) . . . . 22

Miscellaneous:

Lawrence D. Grewach, Recent Case, In re Owens-

Corning Fiberglas Corp.: The Federal Circuit

Puts Owens-Corning \"In the Pink\", 35 Am.

U. L. Rev. 1221 (1986) . . . . 22

Milton Handler & Charles Pickett, Trade-Marks

and Trade Names-An Analysis and Synthesis:

I, 30 Colum. L. Rev. 168 (1930) . . . . 8

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VII

Miscellaneous-Continued:

Page

Brian Richard Henry, Right Hat, Wrong Peg: In

re Owens-Corning Fiberglas Corporation and

the Demise of the Mere Color Rule, 76 Trade-

mark Rep. 389 (1986) . . . . 22

Janet R. Hubbard, Note, Think Pink! Color Can

Be A Trademark, 43 Wash. & Lee L. Rev. 1433

\(1986\) . . . . 22

S. Rep. No. 1333, 79th Cong., 2d Sess. (1946) . . . . 10, 15, 22

S. Rep. No. 515, 100th Cong., 2d Sess. (1988) . . . . 23

The Random House Dictionary of the English

Language (2d ed. 1987) . . . . 7

Trademark Manual of Examining Procedure (2d

ed. 1993) . . . . 26

Webster\'s Third New International Dictionary

\(1986\) . . . . 7

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In the Supreme Court of the United States

OCTOBER TERM, 1994

No. 93-1577

QUALITEX COMPANY, PETITIONER

v\.

JACOBSON PRODUCTS CO., INC.

ON WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES

AS AMICUS CURIAE SUPPORTING PETITIONER

INTEREST OF THE UNITED STATES

This case presents the question whether the Lanham

Act, 15 U.S.C. 1051-1127, authorizes the registration of

color alone as a trademark with the Patent and Trade-

mark Office (PTO), a component of the United States

Department of Commerce. The United States has a sub-

stantial interest in the resolution of that question, because

it is the PTO that must in the first instance determine

whether a \"word, name, symbol, or device,\" 15 U.S.C.

1127, is registrable as a trademark. The United States

also has an interest in protecting the pro-competitive pol-

icies of both the trademark and the antitrust laws. In

addition, the United States has an interest in the ques-

tion presented because the United States must address the

proper protection afforded trademarks in international

treaty negotiations. The United States has advocated in

\(1\)

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2

such negotiations that other countries recognize that color

per se may function as a trademark.

STATEMENT

1\. In 1957, petitioner began manufacturing and selling

pads with a \"unique green-gold color\" for use on dry

cleaning presses. In 1989, respondent began manufactur-

ing and marketing press pads with the same green-gold

color. Pet. App. 2a.

In March 1990, petitioner filed this action in federal

district court, alleging that respondent infringed petition-

er\'s trade dress and that respondent \"passed off\" its goods

as those of petitioner, in violation of Section 43(a) of the

Lanham Act, 15 U.S.C. 1125(a). While the suit was

pending, petitioner obtained Trademark Registration No.

1,633,711 for a green-gold color as applied to press pads

for use in the dry cleaning industry. 1. Petitioner filed a

supplemental complaint, which added the claim that re-

spondent infringed that trademark, in violation of Section

32(1) of the Lanham Act, 15 U.S.C. 1114(1). Respond-

ent counterclaimed for a declaratory judgment that peti-

tioner\'s trademark was invalid on the ground that a trade-

mark could not be granted for color alone and that, even

if such a trademark could in some instances be granted, it

should not have been granted to petitioner for the green-

gold color. Pet. App. 2a-4a.

2\. After a bench trial, the district court entered judg-

ment for petitioner on its claims of trademark infringe-

ment and unfair competition and ruled against respond-

ent\'s counterclaim for cancellation of the trademark. Pet.

App. 30a-31a. The court awarded damages in the amount

of \$8,208 to petitioner and enjoined respondent from

\"manufacturing, marketing or selling press pads made of

any fabric using the same green-gold color \* \* \* or so

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

1 The PTO presently has pending an administrative proceeding in-

volving petitioner\'s registration. That proceeding is currently

suspended, because of the pendency of this case. Jacobson Prods.

Co. V. Qualitex Co., Cancellation No. 19,712.

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3

close to said color that it cannot be easily distinguished

from \* \* \* \[petitioner\'s\] color by the casual user.\" Pet.

App. 3 la.

With respect to the trademark infringement claim and

the cancellation counterclaim, the court found that peti-

tioner had spent substantial sums advertising the color of

its press pads since 1960, and that the color had \"ac-

quired distinctiveness or secondary meaning.\" Pet. App.

17a. The court also found that respondent had \"inten-

tionally copied the overall look of \[petitioner\'s\] green-gold

press pad,\" Pet. App. 20a, and that, based on anecdotal

evidence and a survey conducted by petitioner, respond-

ent\'s use of the green-gold color \"has created the likeli-

hood of confusion, deception or mistake in the market-

place,\" Pet. App. 21a. Finally, the court found that the

green-gold color was non-functional. It is not the natural

color of the yam used to make the press pad, it \"does

not make the press pad perform better,\" and it \"is more

expensive than other colors.\" Pet. App. 22a. In addi-

tion, \"there is no danger of \'color depletion.\'\" Pet. App.

24a. The court found that \"\[t\]here are hundreds or thou-

sands of distinctive shades of greens, yellow, blues, and

browns or tans available to the competitors without dan-

ger that recognizing \[petitioner\'s\] trademark will hinder

competition.\" Ibid.

3\. The Ninth Circuit reversed the district court\'s find-

ing of trademark infringement, affirmed its finding of un-

fair competition, and ordered cancellation of Qualitex\'s

registered mark. Pet. App. 1a-14a. With respect to the

trademark infringement claim and cancellation counter-

claim, the court based its ruling on the principle that \"a

trademark should not be registered for color alone.\" Pet.

App. 7a. The court recognized that \"\[registration of

mere color is not explicitly barred by the Lanham Act.\"

Pet. App. 5a. But, the court concluded, \"the better rule\"

is that color per se is not registrable. Pet. App. 7a. The

court based its decision on (1) the \"color depletion\"

theory, under which registration of colors threatens to

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4

close the market if primary colors or other available

colors all become unavailable to new competitors; (2)

the contention that \"\[d\]rawing distinctions between close

shades of color could present unnecessary problems\"; and

\(3\) the contention that \"\[adequate protection is available

when color is combined in distinctive patterns or designs

or combined in distinctive logos.\" Ibid.

The court of appeals noted that its decision conflicted

with recent decisions of the Federal and Eighth Circuits

holding that color alone could be a trademark, see In re

Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed.

Cir. 1985); Master Distributors, Inc. v. Pako Corp., 986

F.2d 219 (8th Cir. 1993), but that its decision was con-

sistent with the Seventh Circuit\'s recent decision in Nutra-

Sweet Co. v. Stadt Corp., 917 F.2d 1024 (1990), cert.

denied, 499 U.S. 983 ( 1991). Pet. App. 6a-7a.

SUMMARY OF ARGUMENT

The definition of a trademark under the Lanham Act

broadly encompasses \"any word, name, symbol, or device

\* \* \* used \* \* \* to identify and distinguish\" a seller\'s

products \"and to indicate the source of the goods.\" 15

U.S.C. 1127. That provision imposes no limit on what

kind of product feature can be subject to trademark pro-

tection, provided the feature can serve the function of

identifying the source of a product. Accordingly, where

it is demonstrated that color serves, in a given use, as a

symbol or device that identifies the source of a product,

the color satisfies the Lanham Act definition.

The Ninth Circuit\'s policy arguments concerning color

depletion do not provide a basis for recognizing an extra-

statutory exception to the Lanham Act\'s coverage. To be

sure, where a particular use of color is \"functional,\" such

as where its use as ornamentation increases the utility or

appeal of a product or where there is danger that the

available colors for that product would be depleted, pro-

tection could not be granted under ordinary trademark

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5

principles. But that fact does not entail denying trade-

mark protection to color in all circumstances, even when

-as in this case-the use of a color to identify the source

of a product satisfies a careful application of the ordinary

prerequisites for trademark protection.

Nor do the Ninth Circuit\'s concerns about the possi-

bility of shade confusion and the Ninth Circuit\'s recogni-

tion of the availability of other protection under the un-

fair competition provisions of the Lanham Act provide a

basis for a rule categorically refusing trademark protec-

tion for color. Differentiating among shades to determine

whether a use of color has infringed a color trademark is

in principle no more difficult than determining whether a

use of other kinds of symbols or devices that have some

resemblance to a particular trademark is infringing. The

fact that unfair competition protection may be available

provides no basis for altering Congress\'s determination to

provide for overlapping, distinct forms of protection for

trademarks under the unfair competition and trademark

provisions of the Lanham Act.

Finally, insofar as any ambiguity remains, the PTO\'S

determination that color may be registered as a trademark

is entitled to deference. Congress has expressly delegated

authority to the Commissioner of Patents and Trademarks

to register trademarks and to administer the Lanham Act.

The PTO, which has considerable expertise in this area,

has interpreted the Lanham Act to authorize registration

of color per se where it serves as a trademark and does

not deprive competitors of any reasonable right or com-

petitive need. That interpretation is reasonable and con-

sistent with the statute, and it should be given deference

by reviewing courts.

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6

ARGUMENT

COLOR ALONE MAY BE PROTECTED AS A TRADE-

MARK, SO LONG AS THE LEGAL PREREQUISITES

TO SUCH PROTECTION ARE SATISFIED

A. Color Per Se May Satisfy All Of The Lanham Act\'s

Requirements For Trademark Protection

1\. Although the Ninth Circuit ultimately held that a

color alone may not be the subject of a trademark, it

correctly held that \"\[r\]egistration of mere color is not

explicitly barred by the Lanham Act.\" Pet. App. 5a. A

single color may satisfy the Lanham Act\'s definition of a

\"trademark,\" and a color need not be excluded by any

of the specific exceptions to registrability in Section 2

of the Act, 15 U.S.C. 1052.

Under Section 45 of the Lanham Act, the term \"trade-

mark\" is defined to

include\[\] any word, name, symbol, or device, or any

combination thereof-

\(1\) used by a person, or

\(2\) which a person has a bona fide intention to

use in commerce and applies to register on the

principal register established by this chapter,

to identify and distinguish his or her goods, including

a unique product, from those manufactured or sold

by others and to indicate the source of the goods,

even if that source is unknown.

15 U.S.C. 1127.

That definition is very broad. The initial portion of the

definition-\" word, name, symbol, or device\'\'-does not

limit the definition at all, and we are aware of no case

construing those terms to exclude a product feature for

which a seller sought trademark protection. 2. It is the

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

2 The present definition of a trademark is similar to the Lanham

Act\'s original definition, which provided that \" \[t\]he term \'trade-

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7

function of a feature in distinguishing a product and in-

dicating its source, rather than the nature of the feature,

that determines whether it may be subject to trademark

protection. Cf. In re Kotzin, 276 F.2d 411, 414-415

(C.C.P.A. 1960) (definition not \"intended to restrict

registrable trademarks\" in view of use of the term \"in-

cludes\" in definition).

The terms \"symbol\" and \"device\" are particularly

broad. A leading dictionary defines \"symbol\" as \"some-

thing used for or regarded as representing something else.\"

The Random House Dictionary of the English Language

1926 (2d ed. 1987). 3. A color may easily satisfy that

definition, for colors frequently stand for or represent

other things. Familiar examples would include the color

green as representing Ireland; the color white when used

on a flag, banner, or cloth as a symbol of non-belligerence

or truce; and the colors red and green in a traffic signal

representing \"stop\" and \"go.\" The term \"device\" is de-

fined even more broadly as \"a thing made for a particular

purpose.\" Id. at 543. 4. A color alone may qualify as

either a \"symbol\" or \"device,\" See Kotzin, 276 F.2d at

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

mark\' includes any word, name, symbol, or device or any combina-

tion thereof adopted and used by a manufacturer or merchant to

identify his goods and distinguish them from those manufactured

or sold by others. \" Lanham Act of 1946, ch. 540, 45, 60 Stat. 443.

The only difference is that the original definition was limited to

marks that were actually used on the goods, while the present defi-

nition, adopted in 1988, includes marks that a person has a bona

fide intent to use in commerce. See Trademark Law Revision Act

of 1988, Pub. L. No. 100-667, Tit. I, 134(3), 102 Stat. 3947. The

predecessor to the Lanham Act included no comparable definition

of \"trademark.\" See pp. 21-22, infra.

3 Another leading dictionary defines \"symbol\" as \"something that

stands for or suggests something else by reason of relationship,

association, convention, or accidental but not intentional resem-

blance.\" Webster\'s Third New International Dictionary 2316 (1986).

4 Webster\'s Third New International Dictionary defines \"device\"

as \"something that is formed or formulated by design.\" Id. at 618.

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8

415 (mere location of tag on a garment may be \"a sym-

bol or device or a combination thereof\").

A color may also qualify under the balance of the stat-

utory definition. Prior to the Lanham Act, statutory pro-

tection of trademarks extended only to \"technical\" com-

mon law trademarks-i.e., trademarks that are \"inher-

ently distinctive\" and thus have no descriptive content. 5.

But the broad definition incorporated into the Act re-

quires only that what is sought to be registered serve \"to

identify and distinguish \[a person\'s\] goods, including a

unique product, from those manufactured or sold by

others and to indicate the source of the goods, even if that

source is unknown. \" 15 U.S.C. 1127. Virtually any

product feature can satisfy that definition, including entire

product designs and packaging. See, e.g., In re World\'s

Finest Chocolate, Inc., 474 F.2d 1012 (C.C.P.A. 1973)

(shape of wrapped candy bar); In re Minnesota Mining

& Mfg. Co., 335 F.2d 836 (C.C.P.A. 1964) (triangular

shape of chemical); In re Mogen David Wine Corp., 328

F.2d 925 (C.C.P.A. 1964) (decanter wine container);

In re Swift & Co., 223 F.2d 950 (C.C.P.A, 1955) (polka

dot bands on packaging); Fotomat Corp. v. Ace Corp.,

208 U.S.P.Q. 92 (S.D. Calif. 1980) (building design of

photo-finishing store ). So long as the feature is of a type

that may be perceived by purchasers to identify the source

of a product, it may be protected as a trademark. See,

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

5 See William R. Warner & Co. V. Eli Lilly & Co., 265 U.S. 526,

528 (1924) (\"A name which is merely descriptive of the ingredi-

ents, qualities or characteristics of an article of trade cannot be

appropriated as a trademark and the exclusive use of it afforded

legal protection.\"); Scandinavia Belting Co. v. Asbestos & Rubber

Works of America, Inc., 257 F. 937, 946, 957 (2d Cir.) (referring

to protection of \"technical trade-marks\"), cert. denied, 250 U.S.

644 (1919). See also In re Owens-Corning Fiberglas Corp., 774

F.2d 1116, 1119 (Fed. Cir. 1985). See generally Milton Handler &

Charles Pickett, Trade-Marks and Trade Names-An Analysis and

Synthesis: I, 30 Colum. L. Rev. 168, 169-170 (1930).

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9

e.g., In re Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990)

(fragrance registered as trademark of sewing thread and

embroidery yarn ); In re General Electric Broadcasting

Co., 199 U.S.P.Q. 560 (T.T.A.B. 1978) (discussing

registration of sound as service mark for radio broadcast-

ing services. 6.

2\. Section 2 of the Lanham Act confirms the broad

scope of the definition of \"trademark\" in Section 45. It

provides that \"\[n\]o trade-mark by which the goods of the

applicant may be distinguished from the goods of others

shall be refused registration \* \* \* on account of its na-

ture unless\" it fails within five categories of exceptions,

none of which includes color per se. 15 U.S.C. 1052

(emphasis added ). 7. Thus, \"the nature of a mark is no

basis for refusing to register it either as a service mark

or as a trademark if it performs as an indication of source

and does not fall within\" the Section 2 exceptions. Gen-

eral Electric, 199 U.S.P.Q. at 562.

3\. The legislative history of the Lanham Act con-

firms that Congress intended to eliminate arbitrary re-

strictions on the types of product features that could be

granted trademark protection. The Senate report on the

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

6 A number of sounds have been registered as trademarks, includ-

ing Registration No. 916, 522 issued to the National Broadcasting

Co the familiar NBC chimes. The notes of the NBC chimes-

G, E, and C-are the initials of General Electric Corp., which

once owned (and now again owns) the network.

7 Those categories consist primarily of \"immoral, deceptive, or

scandalous matter,\" or the like, 15 U.S.C. 1052(a); \"the flag or

coat of arms or other insignia of the United States, or of any

State or municipality, or of any foreign nation,\" 15 U.S.C. 1052(b);

\"a name, portrait, or signature identifying a particular living

individual except by his written consent,\" 15 U.S.C. 1052(c); \"a

mark which so resembles\" a registered mark \"as to be likely,

when used on or in connection with the goods of the applicant, to

cause confusion, or to cause mistake, or to deceive,\" 15 U.S.C.

1052 (d) ; and a mark which is \"merely descriptive\" or \"deceptively

misdescriptive,\" 15 U.S.C. 1052(e).

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10

Act explained that Congress\'s general purpose was \"to

simplify registration and to make it stronger and more

liberal, \[and\] to dispense with mere technical prohibitions

and arbitrary provisions.\" S. Rep. No. 1333, 79th Cong.,

2d Sess. 3 ( 1946) (emphasis added). In enacting the

Lanham Act, Congress determined that \"a sound public

policy requires that trade-marks should receive nationally

the greatest protection that can be given them.\" Id. at 6.

4\. Although Sections 45 and 2 of the Lanham Act do

not wholly exclude any type of feature from protection as

a trademark, they do impose the requirement that a fea-

ture must be used as a trademark in order to receive pro-

tection. As this Court has explained, \"\[i\]n order to be reg-

istered, a mark must be capable of distinguishing the ap-

plicant\'s goods from those of others.\" Two Pesos, Inc. v.

Taco Cabana, Inc., 112 S. Ct. 2753, 2757 ( 1992); see

Park \'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.

189, 194 ( 1985). A mark is thus \"distinctive and cap-

able of being protected if it either (1) is inherently dis-

tinctive or (2) has acquired distinctiveness through sec-

ondary meaning.\" Two Pesos, 112 S. Ct. at 2758.

A color may not ordinarily receive trademark protec-

tion on the ground that it is \"inherently distinctive.\" As

this Court explained in Two Pesos, \"inherently distinctive\"

marks are those whose \"intrinsic nature\[s\] serve\[\] to iden-

tify a particular source of a product,\" and they are usually

categorized as \"suggestive,\" \"arbitrary,\" or \"fanciful.\"

112 S. Ct. at 2757. A color is ordinarily applied to a

product, however, not to identify its source, but to pro-

vide ornamentation; since it therefore ordinarily does not

function as a trademark at all, it may not be said to be

inherently suggestive, arbitrary, or fanciful. Rather, it is

protectible only if it \"has acquired distinctiveness through

secondary meaning.\" Two Pesos, 112 S. Ct. at 2758.

See 15 U.S.C. 1052(f). 8.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

8 In the case of \"descriptive\" marks, Section 2(e) of the

Lanham Act specifically permits refusal of registration, unless

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11

\"To establish secondary meaning, a manufacturer must,

show that, in the minds of the public, the primary sig-

nificance of a product feature or term is to identify the

source of the product rather than the product itself.\"

Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456

U.S. 844, 851 n.11 ( 1982). In many cases, the \"primary

significance\" of a color will not be \"to identify the source

of the product,\" and the color will accordingly not be

subject to trademark protection.

The question whether a color applied to a particular

article has secondary meaning, however, is generally an

empirical one to be decided on the basis of the facts of

a given case. In In re Owens-Corning Fiberglas Corp.,

774 F.2d 1116 (1985), for example, the Federal Circuit

noted that the producer of the insulation had featured

the pink color of its insulation in its very extensive adver-

tising campaigns and had shown, through a customer sur-

vey, that 40-50% of male homeowners (to whom the in-

sulation was marketed ) identified the producer as the

manufacturer of pink insulation, Id. at 1126-1127. The

court concluded that the \"totality of the evidence\" estab-

lished secondary meaning. Id. at 1128.

The same conclusion follows from the district court\'s

factual findings in this case, The district court found that

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

they can satisfy the \"distinctiveness\'\' -or secondary meaning-

requirement of Section 2(f). Colors, like other ornamental features

of a product, are not \"descriptive\" of the product. Nonetheless,

because such features are not \"inherently distinctive,\" their treat-

ment is similar to that of \"descriptive\" features: it cannot be

concluded that the mark functions as a trademark unless a show-

ing of distinctiveness has been made. See, e.g., Owens-Corning,

774 F.2d at 1124-1125 (sustaining registration of pink color for

fiberglass insulation) ; Vuitton et Fils S.A. v. J. Young Enter-

prises, 644 F.2d 769, 774 (9th Cir. 1981) (sustaining registration

for overall design applied to luggage as a source indicator); Swift

& Co., 223 F.2d at 953 (holding polka dot banding was \"an artistic

and unique design or pattern which may be constituted a trade-

mark \'device\' within the meaning of \[the Lanham Act\]\").

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12

petitioner had extensively advertised the green-gold color

of its press pads, that some customers order the press pads

over the telephone by color, and that other manufacturers

had used other colors. Pet. App. 17a-18a. The district

court also found that survey evidence showed that 39% of

those questioned identified petitioner as the manufacturer

when shown a green-gold press pad, that none named

respondent, and that \"\[n\]umerous\" people who partici-

pated in the survey stated that they identified the press

pad as petitioner\'s because of its \"color.\" Pet. App. 21a.

The district court\'s conclusion that that evidence is suffi-

cient to establish that the green-gold color had acquired

secondary meaning was not clearly erroneous.

5\. Aside from the statutory definition in Section 45

and the exclusions of Section 2, there is another restric-

tion on the circumstances under which a feature of a

product may be protected as a trademark: A \"functional\"

feature of a product is not susceptible of trademark pro-

tection. See, e.g., Two Pesos, 112 S. Ct. at 2758 (trade

dress ); Textron, Inc. v. United States Int\'1 Trade Comm\'n,

753 F.2d 1019, 1024 (Fed. Cir. 1985). The functional-

ity doctrine derives from recognition of the \"fundamental

right to compete through imitation of a competitor\'s prod-

uct.\" In re Morton-Norwich Prods., Inc., 671 F.2d 1332,

1336 (C. C.P.A. 1982). That right may be \"temporarily

denied by the patent or copyright laws,\" ibid., but per-

petual protection of a functional product feature through

trademark protection would defeat that right altogether.

Thus, although the trademark laws protect symbols which

identify the source of particular goods, a trademark may

not be used to limit competitors\' ability to copy features

that render goods more useful. 9.

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

9 Careful application of the functionality doctrine and the re-

quirement of secondary meaning is required to obviate the concern

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13

a\. This Court has explained that, \"\[i\]n general terms,

a product feature is functional if it is essential to the use

or purpose of the article or if it affects the cost or quality

of the article.\" Inwood Laboratories, 456 U.S. at 850

n.10. There are a number of circumstances in which

color per se would have such a functional quality, and

thus would not be eligible for trademark protection. For

example. if there is a limited range of colors that \`may

be applied to an article-i.e., if there is a danger of

\"color depletion,\" see Pet. App. 7a-competing firms and

new producers would require the availability of those

colors in order to participate in the market, and it would

be reasonable to view those colors as \"essential to the

use or purpose of the article.\" Inwood Laboratories, 456

U.S. at 850 n.10. 10. Similarly, if the use of one or more

colors would make production of the product less expen-

sive or the resulting product function better, or if the

application of one or more colors could make the article

more marketable to consumers than would the application

of others, the color or colors would have a functional

quality. and trademark protection would be precluded. 11.

The fact that trademark rights are renewable every ten

years in perpetuity, see 15 U.S.C. 1059(a), emphasizes

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

that registration of color as a trademark could otherwise frustrate

the pro-competitive policies of the Lanham Act and the antitrust

laws.

10 see Diamond Match Co. V. Saginaw Match CO., 142 F. 727,

729 (6th Cir. ) (\"The primary colors, even adding black and

white, are but few. If two of these colors can be appropriated

for one brand of tipped matches, it will not take long to appro-

priate the rest.\"), cert. denied, 203 U.S. 589 (1906) ; cf. In re Bose

Corp., 772 F.2d 866, 872 (Fed. Cir. 1985) (no trademark protection

where a \"feature asserted to give a product distinctiveness is the

best, or at least one, of a few superior designs for its \* \* \*
purpose\").

11 Cf. William R. Warner & Co.. 265 U.S. at 531 (party has no

exclusive rights to brown color of quinine preparation, because it

arose from addition of chocolate, which made preparation more

palatable).

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14

the necessity for competitors and potential competitors to

have access to the color.

This Court has addressed analogous issues regarding

depletion of available trade dress features in Two Pesos,

Inc. v. Taco Cabana, Inc., supra. In that case, the Court

held that the owner of inherently distinctive trade dress is

not required to show that the trade dress has acquired dis-

tinctiveness. Petitioner argued that such a showing should

be made, because the initial user of the trade dress could

otherwise cut off competition from products of similar de-

signs and shapes. The Court relied on functionality con-

siderations in rejecting that argument:

Only nonfunctional, distinctive trade dress is pro-

tected under 43(a) \[of the Lanham Act, 15 U.S.C.

1125 (a)\]. The Fifth Circuit holds that a design

is legally functional, and thus unprotectable, if it is

one of a limited number of equally efficient options

available to competitors and free competition would

be unduly hindered by according the design trade-

mark protection. This serves to assure that competi-

tion will not be stifled by the exhaustion of a limited

number of trade dresses.

112 S. Ct. at 2760-2761 (emphasis added; citation

omitted).

In Brunswick Corp. v. British Seagull Limited, Nos.

94-1049 & 94-1050 (Sept. 14, 1994), the Federal Circuit

recently held that a manufacturer of outboard marine

engines may not register the color black as a trademark.

The court noted that \"\[t\]he color black \* \* \* does not

make the engines function better as engines\" or \"affect

\[their\] mechanical purpose.\" Slip op. 7. But the color

black \"exhibits both color compatibility with a wide va-

riety of boat colors and ability to make objects appear

smaller.\" Ibid. Because of those \"advantages for poten-

tial customers,\" the color was properly found to be func-

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15

tional and hence not subject to protection as a trade-

mark. Ibid. Cf. Keene Corp. v. Paraflex Indus., Inc.,

653 F.2d 822 ( 3d Cir. 1981) (shape of wall-mounted

lighting fixture held functional because of compatibility

with building style); Deere & Co. v. Farmhand, Inc., 560

F. Supp. 85 (S.D. Iowa 1982) (color green may not be

common law trademark because consumers wanted farm

equipment to match), aff\'d, 721 F.2d 253 (8th Cir.

1983).

b\. There are circumstances, however, in which there

is little danger that recognition of trademark rights would

cause color depletion. In those circumstances, if the color

serves no other functional purpose, there is no basis for

refusal to recognize the producer\'s trademark rights in the

color. Indeed, recognition of trademark rights in that

context can serve a pro-competitive purpose. As the Sen-

ate report on the Lanham Act explained:

Trade-marks \* \* \* are the essence of competition,

because they make possible a choice between com-

peting articles by enabling the buyer to distinguish

one from the other. Trade-marks encourage the

maintenance of quality by securing to the producer

the benefit of the good reputation which excellence

creates. To protect trade-marks, therefore, is to pro-

tect the public from deceit, to foster fair competition,

and to secure to the business community the advan-

tages of reputation and good will by preventing their

diversion from those who have created them to those

who have not.

S. Rep. No. 1333, supra, at 4. See also Park \`N Fly, 469

U.S. at 198.

In Owens-Corning, the Federal Circuit accordingly rec-

ognized that trademark protection could be granted be-

cause the use of color at issue was non-functional. 774

F.2d at 1122. In that case, the manufacturer dyed its

fiberglass insulation pink, which is \"a color different from

that which it has as a result of the manufacturing proc-

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16

ess,\" and promoted that identifying feature for many

years. Ibid. The type of insulation involved \"ordinarily

has a light yellow-white coloring.\" Ibid. In its customary

use, insulation is hidden inside a wall, and its ornamental

properties would not be expected to be of substantial

significance to consumers. The Federal Circuit held that,

in those circumstances, the color \"has no utilitarian pur-

pose, does not deprive competitors of any reasonable right

or competitive need, and is not barred from registration

on the basis of functionality.\" Ibid.

In light of the district court\'s findings, the same con-

clusion follows in this case. The district court found that

the natural color\" of the materials in petitioner\'s press

pad is \"yellowed off-white.\" Pet. App. 22a. The non-

primary \"\[g\]reen-gold color dye \* \* \* does not make the

press pad perform better, \" it \"does not affect the quality

of the goods one way or another,\" and it \"does not make

the press pad last longer. \" ibid. Although \"\[t\]here is a

competitive need in the press pad industry for color,\"

other colors are \"equally usable,\" and the \"range of tones

of available distinctive suitable colors \* \* \* is in the

hundreds, if not thousands.\" Ibid. Petitioner\'s green-gold

color is accordingly not barred from recognition as a

trademark on the ground of functionality.

6\. Based on the district court\'s findings, the color of

petitioner\'s press pads thus satisfies the statutory pre-

requisites for recognition as a protectable trademark. The

color is a \"symbol\" or \"device.\" By virtue of its second-

ary meaning, it has acquired the ability \"to identify and

distinguish\" petitioner\'s press pads \"from those manu-

factured or sold by others\" and \"to indicate the source of

the goods.\" 15 U.S.C. 1127. It is not precluded by any

of the specific exclusions of Section 2 of the Lanham Act.

as used in press pads, the green-gold color is non-

functional. Accordingly, applying ordinary principles of

trademark law, the district court correctly concluded that

petitioner\'s trademark in the green-gold press pads was

valid. Pet. App. 23a.

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17

B. The Ninth Circuit\'s Policy Concerns Do Not Warrant

Complete Exclusion Of Color From Trademark

Protection

The Ninth Circuit did not dispute any of the district

court\'s factual findings. The court of appeals remarked

that \"\[r\]egistration of mere color is not explicitly barred

by the Lanham Act,\" and that color \"is not listed\" as

\"one of the specific exceptions to registrability\" in Section

2 of the Lanham Act, 15 U.S.C. 1052. Pet. App. 5a.

Indeed, the court relied on most of the district court\'s

factual findings in ruling that respondent had violated

Section 43 (a) of the Lanham Act, 15 U.S.C. 1125(a),

by infringing on petitioner\'s trade dress. See Pet. App.

10a-14a. The court of appeals nevertheless held peti-

tioner\'s trademark invalid because \"the better rule is that

a trademark should not be registered for color alone.\"

Pet. App. 7a. The court erred in reaching that conclusion.

1\. The court of appeals based its conclusion in part

on the \"color depletion\" theory. Pet. App. 7a. According

to that theory, permitting the protection of colors could

injure competition, by deterring new entrants if and when

all available colors became divided up among current

market participants. 12.

Regardless of whether they have permitted or denied

trademark protection for color per se, every court that

has considered the matter has agreed with the court of

appeals in this case that color depletion is a genuine con-

cern. See, e.g., Master Distributors, Inc. v. Pako Corp.,

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

12 The color depletion argument apparently assumes that if an

applicant receives a registration for a color, it could subsequently

stop use of any shade of that color or combination with that color.

A color mark, however, would not ordinarily be entitled to such

broad protection. See In re Amsted Indus., 972 F.2d 1326, 1327

(Fed. Cir. 1992) (trademark consisting of orange encapsulated wire

rope not confusingly similar to \"bare\" wire rope containing an

orange strand or orange and black strands). Indeed, affording a

needlessly broad scope of protection would be incompatible with the

pro-competitive policies of the antitrust and trademark laws.

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18

986 F.2d 219, 223 (8th Cir. 1993); NutraSweet Co. V.

Stadt Corp., 917 F.2d 1024, 1027-1028 (7th Cir. 1990),

cert. denied, 499 U.S. 983 ( 1991); Owens-Corning, 774

F.2d at 1120. As we explain above, however, the threats

to competition posed by depletion do not exist in every

case, and, based on the district court\'s findings, they do

not appear to exist in this case. See p. 16, supra. Cases

in which color depletion is a threat can be addressed under

a careful application of traditional trademark principles

by requiring those who seek trademark protection for a

color to demonstrate secondary meaning and-of particu-

lar importance-to demonstrate that the color is non-

functional. 13. There is no need, and no basis in law, for

the creation of a blanket, extra-statutory prohibition of

trademark protection for color in order to deal with the

threat of color depletion in particular cases.

2\. The Ninth Circuit also based its rule against trade-

mark protection for color on the problem of \"shade con-

fusion. \" Pet. App. 7a. Presumably, the Ninth Circuit was

concerned that sellers would have difficulty determining

when use of a particular shade infringed the trademark of

another firm that had rights in a similar shade, and that

courts would have difficulty resolving infringement litiga-

tion over use of similar shades.

In order to show infringement under ordinary trade-

mark principles, the owner of the mark must establish

that the alleged infringer\'s use of the mark \"is likely to

cause confusion, or to cause mistake, or to deceive.\" 15

U.S.C. 1114(1) (a) and (b). Although it has been said

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

13 See Brunswick, slip op. 9 (\"While disavowing in Owens-

Corning the color depletion theory as a per se rule, this court

nevertheless recognized its applicability in appropriate circum-

stances.\"); Master Distributors, 986 F.2d at 223 (noting that

\"allowing a manufacturer to monopolize red \`in all of its shades\'

would deplete the color choices available,\" but recognizing that

trademark protection for particular shades may be appropriate);

Owens-Corning, 774 F.2d at 1120 (color depletion \"not faulted for

appropriate application,\" but no basis for precluding trademark

registration of color in particular case).

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19

that likelihood of confusion \"is necessarily a subjective

determination,\" In re Electrolyte Laboratories, Inc., 929

F.2d 645, 647 (Fed. Cir. 1990), courts have made use

of a number of devices, including survey evidence 14. and

evidence of actual confusion by customers or potential

customers, 15. to determine whether there is a \"likelihood

of confusion\" in a variety of circumstances. There is no

reason why issues regarding \"shade confusion\" would be

more difficult to determine than the likelihood of con-

fusion in cases involving traditional non-color trademarks.

Owens-Corning, 774 F.2d at 1123; Master Distributors,

986 F.2d at 222.

Indeed, regardless of how this case is decided, courts

must resolve problems at least as difficult as the problem

of when a particular use of a color creates a likelihood

of confusion with an existing color trademark. As the

Ninth Circuit acknowledged, it has long been recognized

that color is subject to trademark protection when it is

\"combined in distinctive patterns or designs or combined

in distinctive logos.\" Pet. App. 7a. See also NutraSweet,

917 F.2d at 1027; A. Leschen & Sons Rope Co. v.

Broderick & Bascom Rope Co., 201 U.S. 166, 171

\(1906\) (color \"\[doubtless\" may constitute a valid trade-

mark \"if it be impressed in a particular design\"). When

infringement of such trademarks is alleged, the court

must determine not only how the shade of color in the

allegedly infringing product compares with the mark, but

also how significant the similarity of color is in light of

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

14 See, e.g., Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397,

400-401 (8th Cir. 1987), cert. denied, 488 U.S. 933 (1988) ; Piper

Aircraft Corp. v. Wag-Aero, Inc., 741 F.2d 925, 935 (7th Cir. 1984);

Exxon Corp. v. Texas Motor Exchange of Houston, Inc., 628 F.2d

500, 506-507 (5th Cir. 1980); Standard Oil Co. v. Standard

Oil Co., 252 F.2d 65, 74-76 (l0th Cir. 1958) ; McDonald\'s Corp. v.

McBagel\'s, Inc., 649 F. Supp. 1268, 1277-1278 (S.D.N.Y. 1986).

15 See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1543-1544

(11th Cir. 1986), cert. denied, 481 U.S. 1041 (1987) ; World Car-

pets, Inc. v. Dick Littrell\'s New World Carpets, 438 F.2d 482, 489

(5th Cir. 1971); Harold F. Ritchie, Inc. v. Chesebroagh-Pond\'s,

Inc., 281 F.2d 755, 761-762 (2d Cir. 1960).

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20

the overall similarity of design. That endeavor is at least

as difficult as addressing \"shade confusion\" in the case

of purely color trademarks. The difficulty of determining

when infringement occurs thus provides no basis for ex-

cluding protection for color per se when the other pre-

requisites for trademark protection are satisfied.

3\. In deciding that color alone may not be protected

as a trademark, the Ninth Circuit also relied on the

proposition that \"further protection is afforded \[for such

color marks\] by the Lanham Act\'s unfair competition

provisions.\" Pet. App. 8a.

That protection is, of course, also generally available,

and its availability does not justify artificially constricting

the scope of protection under the Act\'s trademark provi-

sions. Moreover, protection against unfair competition

under Section 43(a) of the Lanham Act, 15 U.S.C.

1125 (a), is not equivalent to the protection afforded a

registered trademark. Unlike trademark protection, Sec-

tion 43( a) does not give a party the ability to stop the

importation of confusingly similar goods by Customs, see

15 U.S.C. 1124; does not give constructive notice of

ownership, 15 U.S.C. 1072; does not provide for prima

facie evidence of validity and ownership, 15 U.S.C.

1057 (b); and does not provide for incontestable status,

15 U.S.C. 1065. Trademark registration thus affords an

applicant significant rights not otherwise available under

other provisions of the Lanham Act, or under the law

generally. Those rights should not be denied based on a

per se rule that prohibits registration based on the nature

of the mark, where neither the statute nor compelling

policy reasons support such a denial.

4\. Finally, the Ninth Circuit commented that \"the

courts of appeals generally have refused to grant trade-

mark protection for color alone.\" Pet. App. 5a. In re-

cent decisions, the courts of appeals have been gradually

abandoning the refusal to permit trademark protection for

color alone. The Eighth and Federal Circuits have both

recognized that, in appropriate cases, color may be pro-

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21

tected as a trademark. See Owens-Corning, 774 F.2d at

1123; Master Distributors, 986 F.2d at 223. But it is

nonetheless true that courts have historically been reluc-

tant to recognize trademark protection for color alone.

In our view, that reluctance was based on an interpreta-

tion of trademark statutes that were superseded by the

Lanham Act and by recent amendments to that Act that

have confirmed Congress\'s intent to permit broad trade-

mark protection for any product feature-including color

-that qualifies.

Prior to the Lanham Act, the leading case concerning

whether trademark protection could be afforded to color

alone was A. Leschen & Sons Rope Co. v. Broderick &

Bascom Rope Co., 201 U.S. 166 ( 1906). That case arose

from an infringement action by the owner of a registered

trademark consisting of a wire rope that included a \"dis-

tinctively colored streak.\" Id. at 170. The Court held

that the trademark was invalid because it was not limited

to a streak of some specified color, but instead included

a streak of any distinctive color. Id. at 171. But the

Court also commented that \"\[w\]hether mere color can

constitute a trade-mark may admit of doubt.\" Ibid. 16.

In succeeding years, lower courts frequently cited that

statement as support for the proposition that mere color

cannot constitute a trademark. See, e.g., In re Security

Engineering Co., 113 F.2d 494, 496 (C.C.P.A. 1940)

(refusing registration for blue-and-aluminum color for oil

well reamers); In re General Petroleum Corp., 49 F.2d

966, 968 (C.C.P.A. 1931) (refusing trademark protec-

tion for the color violet for gasoline).

This Court\'s decision in Leschen Rope in 1906 pre-

dated the Lanham Act by 40 years. The trademark stat-

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

16 The Court also stated that \" \[c\]ertainly a trade-mark could

not be claimed of a rope, the entire surface of which was colored.\"

201 U.S. at 170-171. In context, however, that statement appears

not to refer to an attempt to obtain trademark protection for a

rope of a particular color, but to an attempt to obtain trademark

protection for a rope of any color.

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22

ute in 1906 did not provide a definition of the term

\"trademark.\" See Trade Mark Act of 1905, ch. 592, 33

Stat. 724, 15 U.S.C. 81 et seq. (repealed); Philco Corp.

v\. Phillips Mfg. Co., 133 F.2d 663, 669 (7th Cir. 1943).

Courts therefore applied the common law understanding

of the term, under which only \"technical\" trademarks-

i.e., trademarks that contained no descriptive content at

all-could be protected. Most marks that were descrip-

tive could not be registered despite their acquisition of

secondary meaning. See note 5, supra.

In 1946, the Lanham Act changed the legal landscape

substantially. The Act included a new, very broad defini-

tion of \"trademark,\" as well as a specific prohibition-

qualified only by exceptions not applicable here-on re-

fusing registration \"on account of \[the\] nature\" of a mark.

Ch. 540, 2, 45, 60 Stat. 428, 443. See pp. 6-9,

supra. As discussed above, the Lanham Act\'s provisions

were designed \"to dispense with mere technical prohibi-

tions and arbitrary provisions.\" S. Rep. No. 1333, supra,

at 3. Accordingly, the Act superseded prior common law

doctrines that limited the categories of product features

that could receive trademark protection.

Congress confirmed the principle that any product fea-

ture that can satisfy the requirements of the trademark

laws can receive trademark protection when it reenacted

and amended the Lanham Act in 1988. Trademark Law

Revision Act of 1988, Pub. L. No. 100-667, Tit. I, 102

Stat. 3935. Three years previously, the Federal Circuit

in Owens-Corning had affirmed the ruling of the Trade-

mark Trial and Appeal Board (TTAB) that a color

may be protected as a trademark, a ruling that received

wide attention in the legal community. 17. The Senate

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

17 See, e.g., Janet R. Hubbard, Note, Think Pink! Color Can Be A

Trademark, 43 Wash. & Lee L. Rev. 1433 (1986) ; Lawrence D.

Grewach, Recent Case, In re Owens-Corning Fiberglas Corp.: The

Federal Circuit Puts Owens-Corning \"In the Pink\", 35 Am. U. L.

Rev. 1221 (1986) ; Brian Richard Henry, Right Hat, Wrong Peg: In

re Owens-Coming Fiberglas Corporation and the Demise of the

Mere Color Rule, 76 Trademark Rep. 389 (1986).

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23

report accompanying the legislation stated that \"\[t\]he re-

vised definition \[of \`trademark\'\] intentionally retains \* \* \*

the words \'symbol or device\' so as not to preclude the

registration of colors, shapes, sounds or configurations

where they function as trademarks.\" S. Rep. No. 515,

100th Cong., 2d Sess. 44 (1988) (emphasis added).

The terms and legislative history of the Lanham Act

and the 1988 amendments thus make clear that Congress

intended to eliminate previous arbitrary restrictions on

the types of product features that can receive trademark

protection. There is no longer any basis in the statute to

exclude color per se from trademark protection. The

Ninth Circuit\'s adherence to an extra-statutory restriction

is no longer justifiable.

C. If This Court Finds The Statute Ambiguous Or Silent

On The Subject, Deference Should Be Given To The

PTO\'S Interpretation Of The Lanham Act

As we argue above, the Lanham Act unambiguously

permits trademark protection for color alone, where other

appropriate legal requirements for trademark protection

are satisfied. Even if the Act were ambiguous or simply

failed to speak to the issue, however, it would be appro-

priate to defer to the PTO\'S construction of it. Since at

least 1984, the PTO has interpreted the Lanham Act to

permit trademark protection for color alone. Because

that interpretation is, at the very least, a permissible one,

the Ninth Circuit should have deferred to it and recog-

nized the validity of petitioner\'s trademark.

1\. \"Judicial deference to reasonable interpretations by

an agency of a statute that it administers is a dominant,

well settled principle of federal law.\" National Railroad

Passenger Corp. v. Boston & Maine Corp., 112 S. Ct. 1394,

1401 ( 1992). This Court explained in National Railroad

Passenger Corp. that

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24

when a court is reviewing an agency decision based

on a statutory interpretation, \"if the statute is silent

or ambiguous with respect to the specific issue, the

question for the court is whether the agency\'s answer

is based on a permissible construction of the statute.\"

Chevron U.S.A. \[Inc. v. Natural Resources Defense

Council, Inc., 467 U.S. 837, 843 ( 1984)\]. If the

agency interpretation is not in conflict with the plain

language of the statute, deference is due. K Mart

Corp. \[v. Cartier, inc., 486 U.S. 281, 292 ( 1988)\].

Ibid.

Because the PTO administers the Lanham Act, its con-

struction of the Act is entitled to deference. Congress

has delegated authority to the Commissioner of Patents

and Trademarks to examine trademarks and to determine

their registrability. 15 U.S.C. 1062. When the Commis-

sioner issues a registration, the \"certificate of registration

of a mark upon the principal register provided by th\[e\]

\[Act\] shall be prima facie evidence of the validity of the

registered mark.\" 15 U.S.C. 1057(b). Under Section 15

of the Lanham Act, 15 U.S.C. 1065, the right of a regis-

trant to use a registered trademark becomes incontestable,

with certain exceptions, after the mark has been in contin-

uous use for five-consecutive years after registration. See

generally Park \'N Fly, Inc. v. Dollar Park & Fly, Inc.,

supra. The PTO occupies a similar role with respect to

the Lanharn Act as that of other agencies that have been

granted deference in construing statutes entrusted to them

to administer. See, e.g., Northwest Airlines, Inc. v. County

of Kent, 114 S. Ct. 855, 863 (1994) (Secretary of Trans-

portation); National Railroad Passenger Corp., 112 S. Ct.

at 1398, 1401 (Interstate Commerce Commission);

Lechhmere, Inc. v. NLRB, 112 S. Ct. 841, 847 ( 1992)

NLRB). Thus, deference is due to the PTO\'S construc-

tion of the Lanham Act. See Eastman Kodak Co. v. Bell

& Howell Document Mgmt. Prods. Co., 994 F.2d 1569

(Fed. Cir. 1993) (applying Chevron analysis to the

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25

TTAB\'s interpretation of the Lanham Act in other than a

rule-making context ).

2\. Historically, the PTO maintained that color applied

in an arbitrary pattern to goods or packaging for goods, as

distinguished from overall product color, could be regis-

tered as a trademark. It was thought, however, that color

per se was not registrable. See, e.g., In re Ritchie Mfg.

Co., 170 U.S.P.Q. 291, 292 (T.T.A.B. 1971); In re

Shaw, 184 U.S.P.Q. 253, 255 (T.T.A.B. 1974). As trade

practices progressed, the PTO\'S view on the registrability

of color per se also evolved. In Owens-Corning, the TTAB

concluded that there is no absolute ban on registering

overall color as a trademark. 18. In re Owens-Corning Fiber-

glas Corp., 221 U.S.P.Q. 1195, 1198 (T.T.A.B. 1984).

The Board also expressly rejected the color depletion

argument, stating:

In considering the weakness of the \"color deple-

tion\" theory \* \* \* we are not so much impressed

by the idea that there are many shades of color that

might function as trademarks as we are by the no-

tion that the color depletion argument is premised

on a competitive need that may not exist. Thus, in

a case where there is no competitive need (whether

characterized as \"aesthetic\" or otherwise) for colors

to remain available to all competitors, the color de-

pletion argument is an unreasonable restriction on

the acquisition of trademark rights.

Ibid. 19. On appeal, the Federal Circuit agreed, stating that

\"\[t\]he Board\'s conclusion that there is no inherent bar to

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

18 The TTAB includes a number of specified PTO Officials, in-

cluding the Commissioner. 15 U.S.C. 1067. A party dissatisfied

with the decision of the Board may take an appeal to the Federal

Circuit or file a civil action in a district court. 15 U.S.C. 1071.

19 In a portion of its decision later overturned by the Federal

Circuit, see 774 F.2d at 1124-1128, the TTAB found that Owens-

Corning had introduced insufficient evidence that the color pink,

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26

trademark registration of the color of goods, when the

color is an overall color rather than in the form of a

design, is in harmony with modern trademark theory and

jurisprudence.\" Owens-Corning, 774 F.2d at 1118.

In the intervening period, the PTO has clearly set forth

its trademark examination policy regarding the registra-

bility of color marks:

\[C\]olor can function as a trademark if it is used on

the goods in the manner of a trademark and if it is

perceived by the purchasing public as identifying and

distinguishing the goods on which it is used and

indicating their source.

Trademark Manual of Examining Procedure 1202.04(e),

at 1202-13 ( 2d ed. 1993). However, \"registration is

refused irrespective of any showing of acquired distinc-

tiveness if there is a competitive need for colors to remain

available in the industry\" or \"\[i\]f the proposed mark

identifies a color which is functional,\" such that it \"serves

a utilitarian purpose or yields a utilitarian or functional

advantage.\" Ibid.

The PTO has consistently applied its policy in determin-

ing registrability of color per se. See, e.g., Cooper Indus.,

Inc. v. Channellock, Inc., 788 F. Supp. 873, 877 (W.D.

Pa. 1992) (denying summary judgment seeking cancella-

tion of registration for blue applied to hand tools);

Edward Week Inc. v. IM Inc., 17 U.S.P.Q.2d 1142, 1145

(T.T.A.B. 1990) (holding that \"\[t\]here is no inherent bar

to trademark registration of the overall color of goods,\"

but denying registration of green applied to surgical instru-

ments for lack of acquired distinctiveness); in re Eagle

Fence Rentals, Inc., 231 U.S.P.Q. 228, 230-231 (T.T.A.B.

1986 ) (granting registration of alternately colored wire

strands arranged vertically in chain-link fencing on the

basis that color functioned as ornamentation which is

registrable absent functionality upon a showing of ac-

quired distinctiveness ).

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_(footnotes)

as applied to its insulation, had acquired distinctiveness. 221

U.S.P.Q. at 1199.

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27

3\. In the instant case, the Ninth Circuit recognized

that a statutory presumption of validity is accorded to a

certificate of registration under the Lanham Act, 15 U.S.C.

1057 (b). But the Ninth Circuit failed to accord any

deference to the PTO\'S determination that petitioner\'s

mark is registrable or to its interpretation of the Lanham

Act. Rather, the Ninth Circuit chose to substitute what

it believed to be \"the better rule\" for the PTO\'S statutory

interpretation. In doing so, the Ninth Circuit failed to

give due deference to the expertise of the PTO.

CONCLUSION

The judgment of the Ninth Circuit on petitioner\'s

trademark claims should be reversed, and the case should

be remanded for further proceedings.

Respectfully submitted.

NANCY J. LINCK

Solicitor

ALBIN F. DROST

Deputy Solicitor

NANCY C. SLUTTER

Associate Solicitor

LINDA MONCYS ISACSON

Assistant Solicitor

Patent and

Trademark Office

DREW S. DAYS, III

Solicitor General

FRANK W. HUNGER

Assistant Attorney General

ANNE K. BINGAMAN

Assistant Attorney General

LAWRENCE G. WALLACE

Deputy Solicitor General

DIANE P. WOOD

Deputy Assistant Attorney

General

JAMES A. FELDMAN

Assistant to the Solicitor General

WILLIAM KANTER

MARC RICHMAN

DAVID SEIDMAN

Attorneys

NOVEMBER 1994

\*U.S. GOVERNMENT PRINTING OFFICE, 1994 387147 20003

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