United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: FORNEY INDUSTRIES, INC.,

Appellant

______________________

2019-1073

______________________

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

86/269,096.

______________________

Decided: April 8, 2020

______________________

WILLIAM W. COCHRAN, II, Cochran Freund & Young, 

LLC, Fort Collins, CO, argued for appellant. Also represented by JAMES R. YOUNG. 

 MARY BETH WALKER, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by 

THOMAS L. CASAGRANDE, CHRISTINA J. HIEBER, THOMAS W.

KRAUSE, JOSEPH MATAL. 

 ______________________

Before DYK, O’MALLEY, and CHEN, Circuit Judges.

O’MALLEY, Circuit Judge.

Forney Industries, Inc. (“Forney”) appeals from a decision of the Trademark Trial and Appeal Board (“the 

Board”) which affirmed the trademark examining 

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2 IN RE: FORNEY INDUSTRIES, INC.

attorney’s refusal to register Forney’s proposed mark on 

grounds that the proposed mark is of a type that can never 

be inherently distinctive. In Re Forney Indus., Inc., 2018 

WL 4348337 (T.T.A.B. Sept. 10, 2018) (“Board Op.”). Because the Board erred by holding that: (1) a multi-color 

mark can never be inherently distinctive, and (2) product 

packaging marks that employ color cannot be inherently 

distinctive in the absence of a well-defined peripheral 

shape or border, we vacate and remand for further proceedings.

I. BACKGROUND

Forney sells accessories and tools for welding and machining in packaging that displays its proposed mark, 

shown below:

On May 1, 2014, Forney filed Trademark Application 

No. 86/269,096 for its proposed mark for packaging for various welding and machining goods based on use in commerce under Section 1(a) of the Lanham Act, 15 U.S.C. 

§ 1051(a). Forney sought to register the mark without 

showing acquired distinctiveness. In its application, Forney identified its mark as a “color mark” and, as to the colors claimed, noted that “[t]he colors black, yellow and red 

is/are claimed as a feature of the mark.” Joint Appendix 

(“J.A.”) 23. Forney described its mark as follows: “[t]he 

mark consists of a solid black stripe at the top. Below the 

solid black stripe is the color yellow which fades into the 

color red. These colors are located on the packaging and or 

labels.” Id. 

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In an Office Action dated September 16, 2014, the examining attorney refused registration under Sections 1, 2, 

and 45 of the Lanham Act because the mark “is not inherently distinctive.” Id. at 39. The examining attorney noted 

that “[s]uch marks are registrable only on the Supplemental Register or on the Principal Register with sufficient 

proof of acquired distinctiveness.” Id. The examining attorney requested, inter alia, a revised drawing depicting a 

single three-dimensional view of the goods or packaging 

showing those features that Forney claimed as its mark, 

and a revised color claim and mark description. Id. at 40–

41. The Office Action also noted that the colors in Forney’s 

submitted drawing differ from those in the color claim and 

mark description, noting that Forney’s submitted drawing 

shows the color orange but the description omits reference 

to that color. Id. at 41.

In response, Forney revised the mark description as 

follows: “The mark consists of the colors red into yellow 

with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” J.A. 66. On 

May 14, 2015, the examining attorney again refused to register Forney’s proposed trademark, stating that the mark 

was not inherently distinctive, and should be registrable 

only on the Supplemental Register, or, on the Principal 

Register with sufficient proof of acquired distinctiveness. 

Id. at 75. 

Forney appealed this decision to the Board, arguing 

that its proposed mark should be treated as product packaging claiming multiple colors. Board Op. at *2. According 

to Forney, its proposed mark is “product packaging trade 

dress that may be inherently distinctive and, therefore, 

registrable without proof of acquired distinctiveness.” Id. 

The Board affirmed the examining attorney’s refusal to 

register, treating the proposed mark as a color mark consisting of multiple colors applied to product packaging. 

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4 IN RE: FORNEY INDUSTRIES, INC.

Relying on the Supreme Court’s decisions in Two Pesos, 

Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992), Qualitex Co. 

v. Jacobson Prod. Co., 514 U.S. 159 (1995), and Wal-Mart 

Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000), the Board 

found that, when assessing marks consisting of color, there 

is no distinction between colors applied to products and colors applied to product packaging. Board Op. at *3. The 

Board acknowledged that, under Two Pesos, trade dress 

can be inherently distinctive, although the decision “is silent” on how to determine inherent distinctiveness of trade 

dress. Id. at *4. Further, the Board acknowledged that,

under Qualitex, color applied to a product may serve as a 

trademark upon a showing of acquired distinctiveness. Id. 

According to the Board, Wal-Mart “clarifies that, while certain types of product packaging may be inherently distinctive source indicators, a color mark, that is a mark 

consisting of color—whether applied to a product or its 

packaging—is not among them.” Id. at *5. The Board concluded that “Wal-Mart and Qualitex together make clear 

that ‘a particular color on a product or its packaging’ . . . 

can never be inherently distinctive and may only be registered on a showing of acquired distinctiveness.” Id. (citing 

Wal-Mart, 529 U.S. at 212). 

Turning to Forney’s mark, the Board found “no legal 

distinction between a mark consisting of a single color and 

one, such as [Forney’s], consisting of multiple colors without additional elements, e.g., shapes or designs.” Id. at *6. 

According to the Board, Forney had not “attempted to combine its color mark with a uniform shape, pattern, or other 

distinctive design.” Id. Contradicting its earlier finding 

that “a color mark consisting of multiple colors applied to 

product packaging is not capable of being inherently distinctive,” the Board then held that a color mark consisting 

of color applied to product packaging cannot be inherently 

distinctive in the absence of an association with a well-defined peripheral shape or border. Id. at *3, *6 (citing Forney Indus., Inc. v. Daco of Missouri, Inc., 835 F.3d 1238, 

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1250 (10th Cir. 2016)). Apparently applying that standard, 

the Board found Forney’s mark not inherently distinctive. 

Id. Forney timely appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. § 1071(a)(1).

We address in turn both of the Board’s findings: (1) that 

a color mark can never be inherently distinctive in the 

trade dress context and (2) that, even if a color mark could 

be inherently distinctive, it cannot be absent a well-defined 

peripheral shape or border. Board Op. at *6. 

II. DISCUSSION

We review the TTAB’s legal conclusions de novo and its 

findings of fact for substantial evidence. Real Foods Pty 

Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 971 (Fed. Cir. 

2018). “The issue of inherent distinctiveness is a factual 

determination made by the [B]oard.” Hoover Co. v. Royal 

Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001). 

The correct standard to apply in determining inherent distinctiveness, however, is a legal question, which we review 

de novo. In re Chippendales USA, Inc., 622 F.3d 1346, 1350 

(Fed. Cir. 2010).

A.

A trademark includes “any word, name, symbol, or device, or any combination thereof” used by any person “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[.]” 15 U.S.C. § 1127. 

Trade dress constitutes a “symbol” or “device” by which the 

goods of the applicant may be distinguished from the goods 

of others. Wal-Mart, 529 U.S. at 210–11. Trade dress “involves the total image of a product and may include features such as size, shape, color or color combinations, 

texture, graphics, or even particular sales techniques.” 

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1578 (Fed. 

Cir. 1995) (internal quotations and citation omitted). 

Trade dress is registrable as a trademark if it serves the 

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same source-identifying function as a trademark. Marks 

are entitled to protection if they are inherently distinctive, 

i.e., “their intrinsic nature serves to identify a particular 

source of a product.” Two Pesos, 505 U.S. at 768. Thus, a

product’s trade dress is protectable upon a showing of inherent distinctiveness. And if not inherently distinctive, 

marks may be protectable if they acquire distinctiveness, 

i.e., if they “become distinctive of the applicant’s goods in 

commerce.” 15 U.S.C. § 1052(e), (f).1 

We find that the Board erred in two ways: (1) by concluding that a color-based trade dress mark can never be 

inherently distinctive without differentiating between 

product design and product packaging marks; and (2) by 

concluding (presumably in the alternative) that product 

packaging marks that employ color cannot be inherently 

distinctive in the absence of an association with a well-defined peripheral shape or border. 

On the first point, the Board found, and the PTO contends, that Supreme Court case law, “make[s] clear that 

color, whether used on a product or its packaging, can 

never be inherently distinctive.” Appellee’s Br. 11. We disagree. We do not believe that, to date, the Supreme Court 

has gone as far as the Board did here, where the mark is 

proposed for product packaging, as distinct from product 

design. 

For the reasons explained below, we hold that color 

marks can be inherently distinctive when used on product 

packaging, depending upon the character of the color design. As the Supreme Court has made clear, inherent distinctiveness turns on whether consumers would be 

predisposed to “equate the [color] feature with the source.” 

Wal-Mart, 529 U.S. at 211. While it is true that “color is 

1 Acquired distinctiveness is commonly referred to 

as “secondary meaning.” 

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IN RE: FORNEY INDUSTRIES, INC. 7

usually perceived as ornamentation,” In re Owens-Corning 

Fiberglas Corp., 774 F.2d 1116, 1124 (Fed. Cir. 1985), a distinct color-based product packaging mark can indicate the 

source of the goods to a consumer, and, therefore, can be 

inherently distinctive.

B.

Neither the Supreme Court, nor this court, has directly 

addressed whether a multi-color mark applied to product 

packaging can be inherently distinctive. The Supreme 

Court has, however, provided several data points on inherent distinctiveness of trade dress that inform our inquiry. 

In Two Pesos, the Supreme Court held that inherently distinctive trade dress is entitled to protection without a 

showing of secondary meaning. 505 U.S. at 776. The trade 

dress at issue in that case comprised:

a festive eating atmosphere having interior dining 

and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio 

capable of being sealed off from the outside patio by 

overhead garage doors. The stepped exterior of the 

building is a festive and vivid color scheme using 

top border paint and neon stripes.

Id. at 765. Notably, the question of whether the particular

trade dress in that case was inherently distinctive was not 

before the Court. The Court “assume[d], without deciding” 

that the trade dress was inherently distinctive. Id. at 770. 

Thus, Two Pesos stands merely for the proposition that 

trade dress can be inherently distinctive. 

Subsequently, in Qualitex, the Court considered 

whether a single “special shade of green-gold color” on a 

dry-cleaning pad was protectable trade dress. 514 U.S. at 

161. The Court held that “there is no rule absolutely barring the use of color alone” as a trade dress. Id. at 162. The 

Court found no “obvious theoretical objection to the use of 

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8 IN RE: FORNEY INDUSTRIES, INC.

color alone as a trademark, where that color has attained 

‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” 

Id. at 163. 

Although Qualitex implied that a showing of acquired 

distinctiveness may be required before a trade dress mark 

based on color alone can be protectable, it did not expressly 

so hold. The Court returned to these issues in Wal-Mart. 

There, the Court differentiated between two types of proposed trade dress marks—product design and product 

packaging marks. In discussing a product design mark, the 

Court held that, “with respect to at least one category of 

mark—colors—we have held that no mark can ever be inherently distinctive.” 529 U.S. at 211–212 (citing Qualitex, 

at 162–163). The Court went on to state that “design, like 

color, is not inherently distinctive.” Id. at 212. In reaching 

this conclusion, the Court considered the fact that “product 

design almost invariably serves purposes other than source 

identification.” Id. at 213. The Court also distinguished 

the respondent’s trade dress at issue in that case (garment 

design) from the décor of a restaurant at issue in Two Pesos: 

[T]he decor of a restaurant, seems to us not to constitute product design. It was either product packaging—which, as we have discussed, normally is

taken by the consumer to indicate origin—or else 

some tertium quid that is akin to product packaging and has no bearing on the present case. 

Id. at 215. And, the Court noted, “[t]he attribution of inherent distinctiveness to certain categories of . . . product 

packaging derives from the fact that the very purpose of . . . 

encasing [a product] in a distinctive packaging, is most often to identify the source of the product.” Id. at 212. 

With these guideposts in mind, we turn to the issue at 

hand. We conclude that the Board erred in finding that a 

proposed product packaging mark consisting of multiple 

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colors is not capable of being inherently distinctive. Board 

Op. at *4. As a source indicator, Forney’s multi-color product packaging mark is more akin to the mark at issue in

Two Pesos than those at issue in Qualitex and Wal-mart.

Indeed, it falls firmly within the category of marks the 

Court described as potential source identifiers. Supreme 

Court precedent simply does not support the Board’s conclusion that a product packaging mark based on color can 

never be inherently distinctive. 

Indeed, we have addressed the implications of the key 

Supreme Court cases in this area before and held that “in 

Wal-Mart, the Court merely held that product design trade 

dress can never be inherently distinctive, and can only 

qualify for protection through acquired distinctiveness.” 

Chippendales, 622 F.3d at 1357 (citing Wal-mart, 529 U.S. 

at 214–15). As we said there, “[n]othing in the Wal–Mart

decision questioned or undermined” our established case 

law regarding the circumstances under which a proposed 

product packaging mark may be deemed inherently distinctive. Id. at 1358 (citing Seabrook Foods, Inc. v. BarWell Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977)). 

We are not the only court to conclude that color marks 

on product packaging can be inherently distinctive. In considering a mark very similar to the one at issue here, the 

Tenth Circuit held that “the use of color in product packaging can be inherently distinctive (so that it is unnecessary 

to show secondary meaning)” in appropriate circumstances. Forney Indus., Inc. v. Daco of Missouri, Inc., 835 

F.3d 1238, 1248 (10th Cir. 2016). 

Forney’s proposed mark comprises the color red fading 

into yellow in a gradient, with a horizontal black bar at the 

end of the gradient. It is possible that such a mark can be 

perceived by consumers to suggest the source of the goods

in that type of packaging. Accordingly, rather than 

blanketly holding that “[c]olors alone cannot be inherently 

distinctive,” Board Op. at *7, the Board should have 

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considered whether Forney’s mark satisfies this court’s criteria for inherent distinctiveness. 

C.

We now turn to the Board’s alternative conclusion and 

assess whether it comports with our holding here and in 

our prior case law. We conclude that it does not. Without 

explaining why it was doing so, the Board found that a color 

may only be inherently distinctive when used in conjunction with a distinctive peripheral shape or border. 

While the PTO attempts to now characterize the 

Board’s test as less demanding (see Oral Arg. at 21:14–

22:23), available at http://oralarguments.cafc.uscourts.gov

/default.aspx?fl=2019-1073.MP3), that effort is belied by 

the result the Board actually reached here. The Board’s 

judgment rests either on its erroneous view that color 

marks can never be inherently distinctive or on the erroneous requirement that a color mark must be associated with 

a specific peripheral shape or border in order to be inherently distinctive. Nothing in the case law mandates such 

a rule. 

In determining the inherent distinctiveness of trade 

dress, the question to be answered is whether the trade 

dress “makes such an impression on consumers that they 

will assume” the trade dress is associated with a particular 

source. Seabrook, 568 F.2d at 1344. To assess that question, the Board must look to the following factors: 

(1) whether the trade dress is a “common” basic shape or 

design; (2) whether it is unique or unusual in the particular 

field; (3) whether it is a mere refinement of a commonlyadopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or, inapplicable here, 

(4) whether it is capable of creating a commercial impression distinct from the accompanying words. Id. (collecting 

cases). These factors are all different ways to determine 

whether it is reasonable to assume that customers in the 

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IN RE: FORNEY INDUSTRIES, INC. 11

relevant market will perceive the trade dress as an indicator of origin. 

Here, Forney is correct that its proposed mark is not 

just a “color mark,” but also a “symbol.” Appellant’s Br. 22. 

Forney is not attempting to preempt the use of the colors 

red, yellow, and black, but instead seeks to protect only the 

particular combination of these colors, arranged in a particular design, as shown in the drawing submitted for its 

proposed mark. See Oral Arg. 8:03–8:09 (“[The Court:] And 

the . . . visual depiction of the mark governs rather than 

the verbal description, right? [Counsel for Appellant:] 

Yes.”). The question the Board must answer is whether, as 

used on its product packaging, the combination of colors 

and the design those colors create are sufficiently indicative of the source of the goods contained in that packaging. 

And the Board must assess that question based on the 

overall impression created by both the colors employed and 

the pattern created by those colors. See, e.g., McNeil Nutritionals, LLC v. Heartland Sweeteners LLC, 566 F. Supp. 

2d 378, 390 (E.D. Pa. 2008) (court must look to overall combination of elements to determine whether the packaging 

identifies the products as originating with a known source); 

Letica Corp. v. Sweetheart Cup Co., 805 F. Supp. 482, 489 

(E.D. Mich. 1992) (“[w]hile the combination of two colors by 

itself may not be distinctive, a color combination used in 

conjunction with a particular geometric pattern can be a 

valid trademark.”); see also McCarthy on Trademarks and 

Unfair Competition § 7:45 (5th ed.) (where color is confined 

to or creates a defined design, it can be inherently distinctive). 

We conclude that the Board erred in stating that a 

multi-color product packaging mark can never be inherently distinctive. To the extent the Board’s decision suggests that a multi-color mark must be associated with a 

specific peripheral shape in order to be inherently distinctive, that too, was error. Accordingly, we vacate and remand for the Board to consider, whether, for the uses 

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12 IN RE: FORNEY INDUSTRIES, INC.

proposed, Forney’s proposed mark is inherently distinctive

under the Seabrook factors, considering the impression created by an overall view of the elements claimed.2 

III. CONCLUSION

For the reasons explained, we vacate the Board’s decision and remand for proceedings consistent with this opinion. 

VACATED AND REMANDED

COSTS

No costs.

2 We take no position on whether Forney’s use of the 

mark in commerce, as shown by its submitted specimens, 

is consistent. As the parties themselves recognize, that issue is not before us, and is properly considered by the examining attorney in the first instance. See Oral Arg. at 

4:22–5:25; see also Appellee’s Br. 5 n.3. 

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