It’s been settled law for thirty years that single colors applied to products can qualify for trademark protection and registration. In Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the U.S. Supreme Court held that green for dry cleaning press pads was worthy of trademark protection because the relevant consumers, dry cleaners, associated that color with pads from a single source, i.e., green had secondary meaning.

But what happens when a company makes a product in a potentially distinctive color, but then supplies that product to multiple brands while failing to police unauthorized third-party use? The result? The color becomes generic, according to the Federal Circuit’s recent decision In re: Medisafe Technologies (Case No. 2023-1573).

In this recent case, the Federal Circuit affirmed a TTAB decision refusing registration of the following color mark for “chloroprene examination gloves,” one of several types of medical gloves on the market:

The record showed that protective gloves come in many other materials and colors besides chloroprene and green. The record also showed that green is the color of choice for chloroprene gloves, leading the examining attorney to reject Medisafe’s application.

The Trademark Trial and Appeal Board affirmed, applying its two-step test from a prior case Milwaukee Elec. Tool Corp. v. Freud America, Inc., 2-19 WL 6522400 (TTAB 2019): (a) what is the type (genus) of the goods at issue, and (b) does the relevant public understand the color sought to be registered as a category or type of trade dress for that type of product?

In other words, (1) is the relevant category all protective gloves or just chloroprene gloves? Here, the TTAB took Medisafe at its word, tagging chloroprene gloves as the relevant product category in large part because Medisafe limited its application to that variety of gloves. And (2), do users of chloroprene gloves view green as identifying a single brand/ source or as synonymous with the entire category, that is, does green mean chloroprene?

In deciding the second question, the TTAB credited the examiner’s evidence showing that green was the color of choice for chloroprene gloves offered under many different brands, leading to the conclusion that green failed to identify products coming from a single source and, therefore, should remain available for use by all chloroprene gloves.

The Federal Circuit affirmed, agreeing with the TTAB that Medisafe had doomed its own application by supplying green gloves—without trademark licenses—to many different companies and by failing to enforce its alleged green mark against green chloroprene gloves put out by other manufacturers. The proliferation of green chloroprene gloves combined with the glove industry’s practice of using different colors for different materials made green generic in this context.

Interested in Registering and Protecting Single Color Marks? Consider the Following Suggestions¹:

1. Choose a color that is not already used by competitors
2. Favor unusual/unique shades over primary colors
3. Expressly call out and claim the color as a trademark in advertising/promotion, e.g., “Look for the periwinkle widgets,” use of “TM” symbol before registration and ® after registration, state “the color _____ is a trademark of XYZ Corporation.”
4. If supplying the product to others for sale under different brands, insist on trademark licenses for the color
5. Adopt a diligent program of policing and enforcing the color mark against infringers
6. Maintain accurate and complete records of unit sales, revenues, advertising and promotional efforts and expenditures, unsolicited media attention mentioning the color, and consumer comments recognizing the color as unique and distinctive, for use in establishing secondary meaning for purposes of registration and enforcement.

(1) These suggestions are not legal advice. They are intended as general guidance and may not apply to every color, product, industry, or situation.