UnIP (UnIntellectual Property): Trademark for the Color Orange In Connection with Medical Syringes

After receiving a cease and desist letter from its competitor that also produces medical devices, Plaintiff sought declaratory relief and cancellation of the following trademark. The trademark, which was registered on the Supplemental Register, claimed the color orange in a design of a syringe. The Plaintiff was able to successfully get summary judgment in this case out of the Federal District Court for the Central District of California, which included cancellation of the above-identified trademark, because the court found that the color orange was functional. Evidence revealed that the color orange was used to confirm “enteral safety,” meaning medical practitioners relied upon the color to ensure that tubes and catheters were properly connected.  There was also evidence of widespread third party use of the color on such medical devices.  Thus, the court found the color orange as used in connection with medical syringes to be UnIP.

It is important to keep in mind that claiming exclusive trademark rights in a color is doable, but not easy. Color marks are never inherently distinctive, and instead require that the alleged owner established acquired distinctiveness through use. This typically includes establishing the expense of resources (i.e. advertising dollars) and possibly even survey evidence showing consumers associate the particular color with the source of the goods/services. Moreover, as illustrated above, if the color has any functional relevance to the mark, no trademark protection may be possible. The Trademark Manual of Examining Procedure (TMEP) summarizes this concept best, and I quote:

1202.05(b) Functional Color Marks Not Registrable

A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if the color is functional. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66, 34 USPQ2d 1161 (1995); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. Brunswick, 35 F.3d 1527, 32 USPQ2d 1120 (holding the color black functional for outboard motors because, while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1446-47 (TTAB 2007) (deep purple shade for coated abrasives held functional, the Board finding that opposer had established a prima facie case that coated abrasive manufacturers have a competitive need to be able to use various shades of purple, include applicant’s shade, which applicant had failed to rebut; and that “[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing.”); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (color pink used on surgical wound dressings is functional because the actual color of the goods closely resembles Caucasian human skin); In re Orange Commc’ns, Inc., 41 USPQ2d 1036 (TTAB 1996) (colors yellow and orange held to be functional for public telephones and telephone booths, since they are more visible under all lighting conditions in the event of an emergency); In re Howard S. Leight & Assocs., 39 USPQ2d 1058 (TTAB 1996) (color coral held to be functional for earplugs, because it is more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process.

See also In re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functional); Kasco Corp. v. Southern Saw Serv. Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade); R.L. Winston Rod Co. v. Sage Mfg. Co., 838 F. Supp. 1396, 29 USPQ2d 1779 (D. Mont. 1993) (color green used on graphite fishing rods found to be functional); Russell Harrington Cutlery Inc. v. Zivi Hercules Inc., 25 USPQ2d 1965 (D. Mass. 1992) (color white used on cutlery handles found to be functional).

The doctrine of “aesthetic functionality” may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely “utilitarian” in nature, nevertheless dictate that the color remain in the public domain. Brunswick, 35 F.3d at 1533, 32 USPQ2d at 1124. See also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (Supreme Court discussed aesthetic functionality, distinguishing Qualitex, 514 US 159, 34 USPQ2d 1161, as a case where “aesthetic functionality was the central question…”). See TMEP §1202.02(a)(vi).


Ultimately, you have to wonder if the fact that this involved competitors led to overzealous enforcement efforts.  Or, was this truly a close call where the color orange may have originated with and become predominantly associated with the competitor Defendant?

As a Cleveland Browns fan, I do like the color orange and would prefer to get shots out of this syringe, as opposed to one that contained, for example, yellow (Pittsburgh Steeler yellow that is).

Acacia, Inc. v. NeoMed, Inc., SACV 11-1329-JST ANX, 2012 WL 3019948 (C.D. Cal. July 23, 2012).


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