For Immediate Distribution

William W. Cochran and James Young of the Colorado Intellectual Property law firm, Cochran Freund & Young LLC, won a major decision in trademark law in an opinion, In re Forney, issued by the United States Court of Appeals for the Federal Circuit on April 8, 2020. The decision changes the United States Trademark Office’s interpretation and implementation of trademark law with respect to marks that consist of colors. The opinion by the Federal Circuit will guide courts in the future, as well as the U.S. Patent and Trademark Office, as to whether a mark that consists of color can be considered to be inherently distinctive in order to obtain a registration, or whether acquired distinctiveness must be shown.

Companies that use color marks will now be able to obtain federal registrations using a straightforward and well-defined set of rules for showing inherent distinctiveness of their marks. As stated by the court, an applicant must show that the color mark meets the tests set forth in Seabrook Foods, Inc V. Bar-Well Foods Limited, 568 F 2nd 1542, 196 USPQ 289, 291 (CCPA1977). Under Seabrook, inherent distinctiveness is determined by examining whether a mark presents a “common” basic shape or design, or whether the mark is unique or unusual in a particular field. Inherent distinctiveness is also determined by analyzing whether the mark is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods or services, or whether the mark functions as an identifier of the source of the goods or services. Prior to the decision by the Federal Circuit, there was a blanket restriction on finding that a mark consisting of colors is inherently distinctive. As such, a drawn out and expensive process of showing acquired distinctiveness was required in order to obtain a registration. The decision of the Federal Circuit is consistent with the Restatement (Third) of Unfair Trade Practices. Cochran Freund & Young LLC have offices in Fort Collins, Longmont and Denver.