Capacity to be distinctive:
In Re Owens-Corning Fiberglass
Corp.
, 774 F.2d 1116
(Fed. Cir. 1985)
- §1127 of the Trademark Act defines the term "trademark" as follows:
The term "trademark" includes any word, name, symbol, or device, or any combination thereof -
- used by a person, or
- which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
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.
Owens-Corning sought registration
of the color "pink" for use in relation to fiberglass insulation.
- The manufacture of pink insulation was the result of an arbitrary non-utilitarian
selection of color in the design of a product.
Owens-Corning wanted to register the
color "pink" because it felt that "pink" had become associated
strongly with its product. That is, it has acquired secondary meaning in relation to fiberglass insulation and, thus, had become distinctive.
Marks which used color as
a component had been registrable under the preceding Trademark
Act, colors themselves had not.
- The spectrum of available colors
was thought to be too finite to permit any single color's registration.
The court allowed trademark
registration of the color pink.
- It rejected the color
depreciation theory, stating that protection of a particular color
for use in relation to fiber-glass insulation did not confer a monopoly on the use of that color or act as a barrier
to entry into the market. The court also observed that the color in the context of its use here had no utilitarian purpose or function.
- In the court's opinion, consumer evidence showing that "pink" was connected with Owens-Corning's product in the minds of "a significant part of the purchasing public" and $42,000,000 in relevant advertising expenditures demonstrated a level of distinctiveness sufficient to merit reversal of the Trademark Trial and Appeals Board's decision denying registration.
- Other marks, seemingly, had obtained registration with much lesser showings of distinctiveness.
- "John Deere Green"
was, however, denied registration in an earlier case because it
was found to be "aesthetically
functional".
- In Qualitex Co. v. Jacobson Products Co., Inc.,514 U.S. 159 (1995), the Supreme Court followed the rule of Owens and allowed Qualitex to protect the color green-gold.