CITE: 514 U.S. 159
CMON: March 1995
PLAIN: Qualitex Company
DEFND: Jacobson Products Company
COURT: United States Supreme Court
DATE: March 28, 1995
HISTORY:
Petitioner Qualitex Company has for years colored the dry cleaning press pads
it manufactures with a special shade of green-gold. After respondent Jacobson
Products (a Qualitex rival) began to use a similar shade on its own press
pads, Qualitex registered its color as a trademark and added a trademark
infringement count to the suit it had previously filed challenging Jacobson's
use of the green-gold color. Qualitex won in the District Court, but the Ninth
Circuit set aside the judgment on the infringement claim because, in its
view, the Trademark Act of 1946 (Lanham Act) does not permit registration of
color alone as a trademark.
On Writ of Certiorari to the United States Court of Appeals for the Ninth
Circuit. 13 F.3d 1297, reversed.
Held: The Lanham Act permits the registration of a trademark that consists,
purely and simply, of a color. Pp. 162-174.
(a) That color alone can meet the basic legal requirements for use as a
trademark is demonstrated both by the language of the Act, which describes
the universe of things that can qualify as a trademark in the broadest of
terms, 15 U.S.C. Sect. 1127, and by the underlying principles of trademark
law, including the requirements that the mark "identify and distinguish
[the seller's] goods . . . from those manufactured or sold by others and
to indicate [their] source," ibid., and that it not be "functional," see,
e. g., Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844,
850, n. 10, 72 L. Ed. 2d 606, 102 S. Ct. 2182. The District Court's findings
(accepted by the Ninth Circuit and here undisputed) show Qualitex's
green-gold color has met these requirements. It acts as a symbol. Because
customers identify the color as Qualitex's, it has developed secondary
meaning, see, e. g., id., at 851, n. 11, and thereby identifies the press
pads' source. And, the color serves no other function. (Although it is
important to use some color on press pads to avoid noticeable stains, the
court found no competitive need in the industry for the green-gold color,
since other colors are equally usable.) Accordingly, unless there is some
special reason that convincingly militates against the use of color alone
as a trademark, trademark law protects Qualitex's use of its green-gold
color. Pp. 162-166.
(b) Jacobson's various special reasons why the law should forbid the use of
color alone as a trademark -- that a contrary holding (1) will produce
uncertainty and unresolvable court disputes about what shades of a color a
competitor may lawfully use; (2) is unworkable in light of the limited supply
of colors that will soon be depleted by competitors; (3) is contradicted by
many older cases, including decisions of this Court interpreting pre-Lanham
Act trademark law; and (4) is unnecessary because firms already may use color
as part of a trademark and may rely on "trade dress" protection -- are
unpersuasive. Pp. 166-174.
SUMMARY:
A color can be registered as a trademark. So too can a sound or scent be
registered.
JUDGE: MR. JUSTICE BREYER
DECISION:
The question in this case is whether the Trademark Act of 1946 (Lanham Act),
15 U.S.C. (s)(s) 1051-1127 (1988 ed. and Supp. V), permits the registration of
a trademark that consists, [*161] purely and simply, of a color. We conclude
that, sometimes, a color will meet ordinary legal trademark requirements. And,
when it does so, no special legal rule prevents color alone from serving as a
trademark.
I
The case before us grows out of petitioner Qualitex Company's use (since the
1950's) of a special shade of green-gold color on the pads that it makes and
sells to dry cleaning firms for use on dry cleaning presses. In 1989,
respondent Jacobson Products (a Qualitex rival) began to sell its own press
pads to dry cleaning firms; and it colored those pads a similar green-gold.
In 1991, Qualitex registered the special green-gold color on press pads with
the Patent and Trademark Office as a trademark. Registration No. 1,633,711
(Feb. 5, 1991). Qualitex subsequently added a trademark infringement count,
15 U.S.C. Sect. 1114(1), to an unfair competition claim, Sect. 1125(a), in
a lawsuit it had already filed challenging Jacobson's use of the green-gold
color.
Qualitex won the lawsuit in the District Court. 21 U.S.P.Q.2D (BNA) 1457 (CD
Cal. 1991). But, the Court of Appeals for the Ninth Circuit set aside the
judgment in Qualitex's favor on the trademark infringement claim because, in
that Circuit's view, the Lanham Act does not permit Qualitex, or anyone else,
to register "color alone" as a trademark. 13 F.3d 1297, 1300, 1302 (1994).
The Courts of Appeals have differed as to whether or not the law recognizes
the use of color alone as a trademark. Compare NutraSweet Co. v. Stadt Corp.,
917 F.2d 1024, 1028 (CA7 1990) (absolute prohibition against protection of
color alone), with In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1128
(CA Fed. 1985) (allowing registration of color pink for fiberglass
insulation), and Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224
(CA8 1993) (declining to establish per se prohibition against protecting color
alone as a trademark). Therefore, this Court granted certiorari. 512 U.S.
1287 (1994). We now hold that there is no rule absolutely barring the use
of color alone, and we reverse the judgment of the Ninth Circuit.
II
The Lanham Act gives a seller or producer the exclusive right to "register"
a trademark, 15 U.S.C. Sect. 1052 (1988 ed. and Supp. V), and to prevent
his or her competitors from using that trademark, Sect. 1114(1). Both the
language of the Act and the basic underlying principles of trademark law
would seem to include color within the universe of things that can qualify
as a trademark. The language of the Lanham Act describes that universe in
the broadest of terms. It says that trademarks "include any word, name,
symbol, or device, or any combination thereof." Sect. 1127. Since human
beings might use as a "symbol" or "device" almost anything at all that
is capable of carrying meaning, this language, read literally, is not
restrictive. The courts and the Patent and Trademark Office have authorized
for use as a mark a particular shape (of a Coca-Cola bottle), a particular
sound (of NBC's three chimes), and even a particular scent (of plumeria
blossoms on sewing thread). See, e. g., Registration No. 696,147 (Apr. 12,
1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971);
In re Clarke, 17 U.S.P.Q.2D (BNA) 1238, 1240 (TTAB 1990). If a shape, a
sound, and a fragrance can act as symbols why, one might ask, can a color
not do the same?
A color is also capable of satisfying the more important part of the statutory
definition of a trademark, which requires that a person "use" or "intend to
use" the mark
"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. Sect. 1127.
True, a product's color is unlike "fanciful", "arbitrary", or "suggestive"
words or designs, which almost automatically [*163] tell a customer that they
refer to a brand. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
9-10 (CA2 1976) (Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768, 120 L. Ed. 2d 615, 112 S. Ct. 2753 (1992). The imaginary word
"Suntost", or the words "Suntost Marmalade", on a jar of orange jam
immediately would signal a brand or a product "source"; the jam's orange color
does not do so. But, over time, customers may come to treat a particular color
on a product or its packaging (say, a color that in context seems unusual,
such as pink on a firm's insulating material or red on the head of a large
industrial bolt) as signifying a brand. And, if so, that color would have come
to identify and distinguish the goods -- i. e., "to indicate" their "source"
-- much in the way that descriptive words on a product (say, "Trim" on nail
clippers or "Car-Freshner" on deodorizer) can come to indicate a product's
origin. See, e. g., J. Wiss & Sons Co. v. W. E. Bassett Co., 59 C.C.P.A. 1269,
1271, 462 F.2d 567 (Pat.), 462 F.2d 567, 569 (1972); Car-Freshner Corp. v.
Turtle Wax, Inc., 268 F. Supp. 162, 164 (SDNY 1967). In this circumstance,
trademark law says that the word (e. g., "Trim"), although not inherently
distinctive, has developed "secondary meaning". See Inwood Laboratories, Inc.
v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 72 L. Ed. 2d 606, 102 S.
Ct. 2182 (1982) ("Secondary meaning" is acquired when "in the minds of the
public, the primary significance of a product feature . . . is to identify the
source of the product rather than the product itself"). Again, one might ask,
if trademark law permits a descriptive word with secondary meaning to act
as a mark, why would it not permit a color, under similar circumstances,
to do the same?
We cannot find in the basic objectives of trademark law any obvious
theoretical objection to the use of 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").
In principle, trademark law, by preventing others from copying a
source-identifying mark, "reduce[s] the customer's costs of shopping
and making purchasing decisions," 1 J. McCarthy, McCarthy on Trademarks
and Unfair Competition Sect. 2.01[2], p. 2-3 (3d ed. 1994) (hereinafter
McCarthy), for it quickly and easily assures a potential customer that
this item -- the item with this mark -- is made by the same producer as
other similarly marked items that he or she liked (or disliked) in the
past. At the same time, the law helps assure a producer that it (and not
an imitating competitor) will reap the financial, reputation-related
rewards associated with a desirable product. The law thereby "encourage[s]
the production of quality products," ibid., and simultaneously discourages
those who hope to sell inferior products by capitalizing on a consumer's
inability quickly to evaluate the quality of an item offered for sale.
See, e. g., 3 L. Altman, Callmann on Unfair Competition, Trademarks and
Monopolies Sect. 17.03 (4th ed. 1983); Landes & Posner, The Economics of
Trademark Law, 78 T. M. Rep. 267, 271-272 (1988); Park ' N Fly, Inc. v.
Dollar Park & Fly, Inc., 469 U.S. 189, 198, 83 L. Ed. 2d 582, 105 S. Ct. 658
(1985); S. Rep. No. 100-515, p. 4 (1988). It is the source-distinguishing
ability of a mark -- not its ontological status as color, shape, fragrance,
word, or sign -- that permits it to serve these basic purposes. See Landes
& Posner, Trademark Law: An Economic Perspective, 30 J. Law & Econ. 265,
290 (1987). And, for that reason, it is difficult to find, in basic
trademark objectives, a reason to disqualify absolutely the use of a
color as a mark.
Neither can we find a principled objection to the use of color as a mark in
the important "functionality" doctrine of trademark law. The functionality
doctrine prevents trademark law, which seeks to promote competition by
protecting a firm's reputation, from instead inhibiting legitimate competition
by allowing a producer to control a useful product feature. It is the province
of patent law, not trademark law, to encourage invention by granting inventors
a monopoly over new product designs or functions for a limited time, 35 U.S.C.
Sections 154, 173, after which competitors are free to use the innovation.
If a product's functional features could be used as trademarks, however, a
monopoly over such features could be obtained without regard to whether they
qualify as patents and could be extended forever (because trademarks may be
renewed in perpetuity). See Kellogg Co. v. National Biscuit Co., 305 U.S.
111, 119-120, 83 L. Ed. 73, 59 S. Ct. 109 (1938) (Brandeis, J.); Inwood
Laboratories, Inc., supra, at 863 (White, J., concurring in result) ("A
functional characteristic is 'an important ingredient in the commercial
success of the product', and, after expiration of a patent, it is no more
the property of the originator than the product itself") (citation omitted).
Functionality doctrine therefore would require, to take an imaginary
example, that even if customers have come to identify the special
illumination-enhancing shape of a new patented light bulb with a particular
manufacturer, the manufacturer may not use that shape as a trademark, for
doing so, after the patent had expired, would impede competition -- not by
protecting the reputation of the original bulb maker, but by frustrating
competitors' legitimate efforts to produce an equivalent
illumination-enhancing bulb. See, e. g., Kellogg Co., supra, at 119-120
(trademark law cannot be used to extend monopoly over "pillow" shape of
shredded wheat biscuit after the patent for that shape had expired). This
Court consequently has explained that, "in general terms, a product feature
is functional", and cannot serve as a trademark, "if it is essential to the
use or purpose of the article or if it affects the cost or quality of the
article," that is, if exclusive use of the feature would put competitors at a
significant non-reputation-related disadvantage. Inwood Laboratories, Inc.,
supra, at 850, n. 10. Although sometimes color plays an important role
(unrelated to source identification) in making a product more desirable,
sometimes it does not. And, this latter fact -- the fact that sometimes color
is not essential to a product's use or purpose and does not affect cost or
quality -- indicates that the doctrine of "functionality" does not create an
absolute bar to the use of color alone as a mark. See Owens-Corning, 774 F.2d
at 1123 (pink color of insulation in wall "performs no non-trademark
function").
It would seem, then, that color alone, at least sometimes, can meet the
basic legal requirements for use as a trademark. It can act as a symbol
that distinguishes a firm's goods and identifies their source, without
serving any other significant function. See U.S. Dept. of Commerce, Patent
and Trademark Office, Trademark Manual of Examining Procedure Sect.
1202.04(e), p. 1202-13 (2d ed. May, 1993) (hereinafter PTO Manual)
(approving trademark registration of color alone where it "has become
distinctive of the applicant's goods in commerce", provided that "there
is [no] competitive need for colors to remain available in the industry"
and the color is not "functional"); see also 1 McCarthy Sections 3.01[1],
7.26, pp. 3-2, 7-113 ("requirements for qualification of a word or symbol
as a trademark" are that it be (1) a "symbol", (2) "used . . . as a mark",
(3) "to identify and distinguish the seller's goods from goods made or
sold by others", but that it not be "functional"). Indeed, the District
Court, in this case, entered findings (accepted by the Ninth Circuit) that
show Qualitex's green-gold press pad color has met these requirements. The
green-gold color acts as a symbol. Having developed secondary meaning (for
customers identified the green-gold color as Qualitex's), it identifies the
press pads' source. And, the green-gold color serves no other function.
(Although it is important to use some color on press pads to avoid
noticeable stains, the court found "no competitive need in the press pad
industry for the green-gold color, since other colors are equally usable."
21 U.S.P.Q.2D (BNA) at 1460.) Accordingly, unless there is some special
reason that convincingly militates against the use of color alone as a
trademark, trademark law would protect Qualitex's use of the green-gold
color on its press pads.
III
Respondent Jacobson Products says that there are four special reasons why
the law should forbid the use of color alone as a trademark. We shall
explain, in turn, why we, ultimately, find them unpersuasive.
First, Jacobson says that, if the law permits the use of color as a trademark,
it will produce uncertainty and unresolvable court disputes about what shades
of a color a competitor may lawfully use. Because lighting (morning sun,
twilight mist) will affect perceptions of protected color, competitors and
courts will suffer from "shade confusion" as they try to decide whether use of
a similar color on a similar product does, or does not, confuse customers and
thereby infringe a trademark. Jacobson adds that the "shade confusion" problem
is "more difficult" and "far different from" the "determination of the
similarity of words or symbols." Brief for Respondent 22.
We do not believe, however, that color, in this respect, is special. Courts
traditionally decide quite difficult questions about whether two words or
phrases or symbols are sufficiently similar, in context, to confuse buyers.
They have had to compare, for example, such words as "Bonamine" and
"Dramamine" (motion-sickness remedies); "Huggies" and "Dougies" (diapers);
"Cheracol" and "Syrocol" (cough syrup); "Cyclone" and "Tornado" (wire fences);
and "Mattres" and "1-800-Mattres" (mattress franchisor telephone numbers).
See, e. g., G. D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385, 389 (CA7
1959); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144,
1146-1147 (CA Fed. 1985); Upjohn Co. v. Schwartz, 246 F.2d 254, 262 (CA2
1957); Hancock v. American Steel & Wire Co. of N. J., 40 C.C.P.A. 931, 935,
203 F.2d 737, 740-741 (1953); Dial-A-Mattress Franchise Corp. v. Page, 880
F.2d 675, 678 (CA2 1989). Legal standards exist to guide courts in making
such comparisons. See, e. g., 2 McCarthy Sect. 15.08; 1 McCarthy Sections
11.24-11.25 ("Strong" marks, with greater secondary meaning, receive broader
protection than "weak" marks). We do not see why courts could not apply
those standards to a color, replicating, if necessary, lighting conditions
under which a colored product is normally sold. See Ebert, Trademark
Protection in Color: Do It By the Numbers!, 84 T. M. Rep. 379, 405 (1994).
Indeed, courts already have done so in cases where a trademark consists of
a color plus a design, i.e., a colored symbol such as a gold stripe (around
a sewer pipe), a yellow strand of wire rope, or a "brilliant yellow" band
(on ampules). See, e. g., Youngstown Sheet & Tube Co. v. Tallman Conduit
Co., 149 U.S.P.Q. (BNA) 656, 657 (TTAB 1966); Amsted Industries, Inc. v.
West Coast Wire Rope & Rigging Inc., 2 U.S.P.Q.2D (BNA) 1755, 1760 (TTAB
1987); In re Hodes-Lange Corp., 167 U.S.P.Q. (BNA) 255, 256 (TTAB 1970).
Second, Jacobson argues, as have others, that colors are in limited supply.
See, e. g., NutraSweet Co., 917 F.2d at 1028; Campbell Soup Co. v. Armour &
Co., 175 F.2d 795, 798 (CA3 1949). Jacobson claims that, if one of many
competitors can appropriate a particular color for use as a trademark, and
each competitor then tries to do the same, the supply of colors will soon
be depleted. Put in its strongest form, this argument would concede that
"hundreds of color pigments are manufactured and thousands of colors can
be obtained by mixing." L. Cheskin, Colors: What They Can Do For You 47
(1947). But, it would add that, in the context of a particular product, only
some colors are usable. By the time one discards [**1306] colors that, say,
for reasons of customer appeal, are not usable, and adds the shades that
competitors cannot use lest they risk infringing a similar, registered shade,
then one is left with only a handful of possible colors. And, under these
circumstances, to permit one, or a few, producers to use colors as trademarks
will "deplete" the supply of usable colors to the point where a competitor's
inability to find a suitable color will put that competitor at a significant
disadvantage.
This argument is unpersuasive, however, largely because it relies on an
occasional problem to justify a blanket prohibition. When a color serves as a
mark, normally alternative colors will likely be available for similar use
by others. See, e. g., Owens-Corning, 774 F.2d at 1121 (pink insulation).
Moreover, if that is not so -- if a "color depletion" or "color scarcity"
problem does arise -- the trademark doctrine of "functionality" normally would
seem available to prevent the anticompetitive consequences that Jacobson's
argument posits, thereby minimizing that argument's practical force.
The functionality doctrine, as we have said, forbids the use of a product's
feature as a trademark where doing so will put a competitor at a significant
disadvantage because the feature is "essential to the use or purpose of the
article" or "affects [its] cost or quality". Inwood Laboratories, Inc., 456
U.S. at 850, n. 10. The functionality doctrine thus protects competitors
against a disadvantage (unrelated to recognition or reputation) that trademark
protection might otherwise impose, namely their inability reasonably to
replicate important non-reputation-related product features. For example, this
Court has written that competitors might be free to copy the color of a
medical pill where that color serves to identify the kind of medication (e.
g., a type of blood medicine) in addition to its source. See id., at 853, 858,
n. 20 ("Some patients commingle medications in a container and rely on color
to differentiate one from another"); see also J. Ginsburg, D. Goldberg, & A.
Greenbaum, Trademark and Unfair Competition Law 194-195 (1991) (noting that
drug color cases "have more to do with public health policy" regarding generic
drug substitution "than with trademark law"). And, the federal courts have
demonstrated that they can apply this doctrine in a careful and reasoned
manner, with sensitivity to the effect on competition. Although we need not
comment on the merits of specific cases, we note that lower courts have
permitted competitors to copy the green color of farm machinery (because
customers wanted their farm equipment to match) and have barred the use of
black as a trademark on outboard boat motors (because black has the special
functional attributes of decreasing the apparent size of the motor and
ensuring compatibility with many different boat colors). See Deere & Co. v.
Farmhand, Inc., 560 F. Supp. 85, 98 (SD Iowa 1982), aff'd, 721 F.2d
253 (CA8 1983); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532
(CA Fed. 1994), cert. pending, No. 94-1075; see also Nor-Am Chemical
v. O. M. Scott & Sons Co., 4 U.S.P.Q.2D (BNA) 1316, 1320 (ED Pa. 1987) (blue
color of fertilizer held functional because it indicated the presence of
nitrogen). The Restatement (Third) of Unfair Competition adds that, if a
design's "aesthetic value" lies in its ability to "confer a significant
benefit that cannot practically be duplicated by the use of alternative
designs," then the design is "functional." Restatement (Third) of Unfair
Competition Sect. 17, Comment c, pp. 175-176 (1993). The "ultimate test of
aesthetic functionality," it explains, "is whether the recognition of
trademark rights would significantly hinder competition." Id., at 176.
The upshot is that, where a color serves a significant nontrademark function
-- whether to distinguish a heart pill from a digestive medicine or to satisfy
the "noble instinct for giving the right touch of beauty to common and
necessary things," G. Chesterton, Simplicity and Tolstoy 61 (1912) -- courts
will examine whether its use as a mark would permit one competitor (or a
group) to interfere with legitimate (nontrademark-related) competition through
actual or potential exclusive use of an important product ingredient. That
examination should not discourage firms from creating esthetically pleasing
mark designs, for it is open to their competitors to do the same. See, e.g.,
W. T. Rogers Co. v. Keene, 778 F.2d 334, 343 (CA7 1985) (Posner, J.). But,
ordinarily, it should prevent the anticompetitive consequences of
Jacobson's hypothetical "color depletion" argument, when, and if, the
circumstances of a particular case threaten "color depletion."
Third, Jacobson points to many older cases -- including Supreme Court cases --
in support of its position. In 1878, this Court described the common-law
definition of trademark rather broadly to "consist of a name, symbol,
figure, letter, form, or device, if adopted and used by a manufacturer or
merchant in order to designate the goods he manufactures or sells to
distinguish the same from those manufactured or sold by another." McLean v.
Fleming, 96 U.S. 245, 254, 24 L. Ed. 828. Yet, in interpreting the Trademark
Acts of 1881 and 1905, 21 Stat. 502, 33 Stat. 724, which retained that
common-law definition, the Court questioned "whether mere color can constitute
a valid trade-mark", A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope
Co., 201 U.S. 166, 171, 50 L. Ed. 710, 26 S. Ct. 425 (1906), and suggested
that the "product including the coloring matter is free to all who make it",
Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 147, 65 L. Ed. 189, 41 S.
Ct. 113 (1920). Even though these statements amounted to dicta, lower courts
interpreted them as forbidding protection for color alone. See, e. g.,
Campbell Soup Co., 175 F.2d at 798, and n. 9; Life Savers Corp. v. Curtiss
Candy Co., 182 F.2d 4, 9 (CA7 1950) (Campbell Soup, supra, at 798).
These Supreme Court cases, however, interpreted trademark law as it existed
before 1946, when Congress enacted the Lanham Act. The Lanham Act
significantly changed and liberalized the common law to "dispense with mere
technical prohibitions", S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946),
most notably, by permitting trademark registration of descriptive words (say,
"U-Build-It" model airplanes) where they had acquired "secondary meaning."
See Abercrombie & Fitch Co., 537 F.2d at 9 (Friendly, J.). The Lanham
Act extended protection to descriptive marks by making clear that (with
certain explicit exceptions not relevant here)
"nothing . . . shall prevent the registration of a mark used by the
applicant which has become distinctive of the applicant's goods in
commerce." 15 U.S.C. Sect. 1052(f) (1988 ed., Supp. V).
This language permits an ordinary word, normally used for a nontrademark
purpose (e. g., description), to act as a trademark where it has gained
"secondary meaning." Its logic would appear to apply to color as well.
Indeed, in 1985, the Federal Circuit considered the significance of the
Lanham Act's changes as they related to color and held that trademark
protection for color was consistent with the
"jurisprudence under the Lanham Act developed in accordance with the
statutory principle that if a mark is capable of being or becoming
distinctive of [the] applicant's goods in commerce, then it is
capable of serving as a trademark." Owens-Corning, 774 F.2d at 1120.
In 1988, Congress amended the Lanham Act, revising portions of the
definitional language, but left unchanged the language here relevant.
Section 134, 102 Stat. 3946, 15 U.S.C. Sect. 1127. It enacted these
amendments against the following background: (1) the Federal Circuit
had decided Owens-Corning; (2) the Patent and Trademark Office had adopted
a clear policy (which it still maintains) permitting registration of color
as a trademark, see PTO Manual Sect. 1202.04(e) (at p. 1200-12 of the
January 1986 edition and p. 1202-13 of the May 1993 edition); and (3)
the Trademark Commission had written a report, which recommended that
"the terms 'symbol, or device' . . . not be deleted or narrowed to
preclude registration of such things as a color, shape, smell, sound,
or configuration which functions as a mark", The United States Trademark
Association Trademark Review Commission Report and Recommendations to
USTA President and Board of Directors, 77 T. M. Rep. 375, 421 (1987); see
also 133 Cong. Rec. 32812 (1987) (statement of Sen. DeConcini) ("The bill I am
introducing today is based on the Commission's report and recommendations").
This background strongly suggests that the language "any word, name, symbol,
or device," 15 U.S.C. Sect. 1127, had come to include color. And, when
it amended the statute, Congress retained these terms. Indeed, the Senate
Report accompanying the Lanham Act revision explicitly referred to this
background understanding, in saying that the "revised definition 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. 100-515, at 44. (In addition, the statute retained
language providing that "no trademark by which the goods of the applicant may
be distinguished from the goods of others shall be refused registration . . .
on account of its nature" (except for certain specified reasons not relevant
here). 15 U.S.C. Sect. 1052 (1988 ed., Supp. V).)
This history undercuts the authority of the precedent on which Jacobson
relies. Much of the pre-1985 case law rested on statements in
Supreme Court opinions that interpreted pre-Lanham Act trademark law and were
not directly related to the holdings in those cases. Moreover, we believe the
Federal Circuit was right in 1985 when it found that the 1946 Lanham Act
embodied crucial legal changes that liberalized the law to permit the use of
color alone as a trademark (under appropriate circumstances). At a minimum,
the Lanham Act's changes left the courts free to reevaluate the preexisting
legal precedent which had absolutely forbidden the use of color alone as a
trademark. Finally, when Congress reenacted the terms "word, name, symbol,
or device" in 1988, it did so against a legal background in which those
terms had come to include color, and its statutory revision embraced that
understanding.
Fourth, Jacobson argues that there is no need to permit color alone to
function as a trademark because a firm already may use color as part of a
trademark, say, as a colored circle or colored letter or colored word, and may
rely upon "trade dress" protection, under Sect. 43(a) of the Lanham Act, if a
competitor copies its color and thereby causes consumer confusion regarding
the overall appearance of the competing products or their packaging, see 15
U.S.C. Sect. 1125(a) (1988 ed., Supp. V). The first part of this argument
begs the question. One can understand why a firm might find it difficult
to place a usable symbol or word on a product (say, a large industrial bolt
that customers normally see from a distance); and, in such instances, a firm
might want to use color, pure and simple, instead of color as part of a
design. Neither is the second portion of the argument convincing. Trademark
law helps the holder of a mark in many ways that "trade dress" protection
does not. See 15 U.S.C. Sect. 1124 (ability to prevent importation of
confusingly similar goods); Sect. 1072 (constructive notice of ownership);
Sect. 1065 (incontestible status); Sect. 1057(b) (prima facie evidence of
validity and ownership). Thus, one can easily find reasons why the law
might provide trademark protection in addition to trade dress protection.
IV
Having determined that a color may sometimes meet the basic legal requirements
for use as a trademark and that respondent Jacobson's arguments do not justify
a special legal rule preventing color alone from serving as a trademark (and,
in light of the District Court's here undisputed findings that Qualitex's
use of the green-gold color on its press pads meets the basic trademark
requirements), we conclude that the Ninth Circuit erred in barring Qualitex's
use of color as a trademark. For these reasons, the judgment of the Ninth
Circuit is
REVERSED.