13 F.3d 1297 (9th Cir. 1994), 91-56260, Qualitex Co. v. Jacobson Products Co., Inc.

Docket Nº:91-56260.
Citation:13 F.3d 1297
Party Name:29 U.S.P.Q.2d 1277 QUALITEX COMPANY, Plaintiff-Appellee, v. JACOBSON PRODUCTS COMPANY, INC., Defendant-Appellant.
Case Date:January 03, 1994
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

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13 F.3d 1297 (9th Cir. 1994)

29 U.S.P.Q.2d 1277

QUALITEX COMPANY, Plaintiff-Appellee,



No. 91-56260.

United States Court of Appeals, Ninth Circuit

January 3, 1994

Argued and Submitted Feb. 2, 1993.

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[Copyrighted Material Omitted]

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Laurence D. Strick, Richman, Lawrence, Mann, Green, Arbiter & Chizever, Beverly Hills, CA, for defendant-appellant.

Donald G. Mulack, Keck, Mahin & Cate, Chicago, IL, for plaintiff-appellee.

Appeal from the United States District Court for the Central District of California.

Before: HUG, FERGUSON, O'SCANNLAIN, Circuit Judges.

HUG, Circuit Judge:

The primary issue in this trademark and unfair competition case is whether color per se is protectable under the Lanham Act. This action involves a claim of trademark infringement and unfair competition. Qualitex Company ("Qualitex") contended that Jacobson

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Products Company, Inc. ("Jacobson") was manufacturing and selling green-gold press pads designed to look like the "SUN GLOW" pads that Qualitex had promoted and sold for over 30 years. Jacobson brought a counterclaim to declare invalid the Qualitex trademark for the color of its pads on the ground that a trademark could not be granted for color alone. The district court held Jacobson liable for damages from trademark infringement and unfair competition, and enjoined Jacobson from manufacturing, marketing, or selling press pads of the same green-gold color as the pads marketed by Qualitex.

The district court's jurisdiction was based upon 15 U.S.C. Sec. 1121 and 28 U.S.C. Sec. 1338(a) and (b). We have jurisdiction pursuant to 28 U.S.C. Sec. 1291, and we affirm the judgment against Jacobson for unfair competition but hold that the Qualitex trademark for color alone is invalid.


Qualitex, an Illinois corporation, manufactures and sells various products for dry cleaners, laundries and garment manufacturers. In 1957, Qualitex began manufacturing and selling its "SUN GLOW" press pad for use on dry cleaning presses. Qualitex's predecessor registered the trademark "SUN GLOW" with the United States Patent and Trademark Office in 1959. The fabric for the cover of the pad is a unique green-gold color.

Jacobson began manufacturing and marketing a "MAGIC GLOW" press pad in 1989. The cover is the same green-gold color as that of Qualitex's "SUN GLOW" pad, and the names of the pads are similar.

Qualitex initiated this action on March 9, 1990, by filing a complaint seeking injunctive relief and damages from Jacobson on the grounds that (1) Jacobson infringed Qualitex's trade dress in violation of Section 43(a) of the Lanham Act; and (2) Jacobson "passed off" its goods as those of Qualitex, and thus was guilty of unfair competition in violation of section 43 of the Lanham Act. During the pendency of this action, Qualitex filed for registration of the green-gold color. Registration was granted by the Patent and Trademark Office on February 5, 1991, and Qualitex added to its complaint the claim that Jacobson infringed Qualitex's federally registered trademark, in violation of Section 32(1) of the Lanham Act, 15 U.S.C. Sec. 1114(1).

Jacobson argued that its actions were not prohibited by Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), as unfair competition. Further, Jacobson counterclaimed for the cancellation of Qualitex's registered trademark, arguing that no valid interest existed because color per se is not protectable; the color is functional and thus not protectable; no likelihood of confusion existed; and no secondary meaning was associated with Qualitex's trademark.

The evidence showed that readers of a trade publication associated the green-gold color with Qualitex, and that the "SUN GLOW" pad had acquired secondary meaning, as a result of its long and exclusive use by Qualitex. Jacobson admitted intentionally copying the overall look of Qualitex's green-gold press pad. The court concluded that the sale of the Jacobson pad had created the likelihood of confusion, deception or mistake in the marketplace. As to the green-gold color, the court found that the color did not affect the quality of the pads, and that there was no competitive need in the industry for the particular green-gold color. Although the court found a competitive need in the industry for color in general, the court noted that the range of tones available was "in the hundreds, if not thousands."

In its Conclusions of Law, the court held that Jacobson had infringed Qualitex's registered trademark and had failed to prove that the trademark was invalid. Jacobson was found guilty of unfair competition by copying the appearance of the "SUN GLOW" pad and deceiving purchasers, putting an inferior product into the marketplace under Qualitex's distinctive trade dress to the detriment of said purchasers and Qualitex, and infringing Qualitex's registered trademark for the green-gold color. Finally, the court held that Jacobson was also guilty of unfair competition because Jacobson had infringed Qualitex's trade dress.

The district court's order provided that Qualitex was entitled to an injunction against

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Jacobson's infringement of the registered trademark and the trade dress, and against the unfair competition. Jacobson was also held liable for the profits it made from its infringement. The court did not award enhanced damages and attorney's fees because Jacobson's copying had been done under the reasonable belief that Qualitex could not appropriate a color.


A claim of federal trademark infringement may be brought against one who, without the permission of the holder of the registered trademark,

use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive....

15 U.S.C. Sec. 1114(1)(a); see also Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir.1988).

While this case was pending, Qualitex applied to the U.S. Patent and Trademark Office for a Certificate of Registration, granted on February 5, 1991. The registration states in part:

For machine parts: namely, press pads and covers for press pads for commercial and industrial presses....

The drawing is lined for the color gold.

The mark consists of a particular shade of green-gold applied to the top and side surfaces of the goods.

Certificate of Registration No. 1,633,711.

A certificate of registration is prima facie evidence of the validity of the mark and relieves the holder, Qualitex, of the burden of proving nonfunctionality and secondary meaning. 15 U.S.C. Sec. 1057(b). It shifts the burden of proof to the contesting party, who must introduce sufficient evidence to rebut the presumption of the holder's right to protected use. See Vuitton et Fils S.A. v. J. Young Enterprises, Inc., 644 F.2d 769, 775 (9th Cir.1981). Jacobson contends that it met that burden by showing that Qualitex's green-gold color alone is not protectable, and that the trademark is invalid.


The district court ruled that Jacobson infringed on Qualitex's registered trademark, the green-gold color of the press pads. A district court's findings of facts are reviewed for clear error. See Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 514 (9th Cir.), cert. denied, 493 U.S. 872, 110 S.Ct. 202, 107 L.Ed.2d 155 (1989). Whether color per se qualifies for trademark protection is a legal question to be reviewed de novo. See id. ("[i]ssues concerning the correct test to be used in evaluating trademark infringement are reviewed de novo ").

Registration of mere color is not explicitly barred by the Lanham Act, which provides that "[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration," 15 U.S.C. Sec. 1052, unless one of the specific exceptions to registrability set forth in 15 U.S.C. Sec. 1052 applies. Color is not listed as an exception. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 1119 (Fed.Cir.1985). However, the courts of appeals generally have refused to grant trademark protection for color alone. See Owens-Corning, 774 F.2d at 1128 & n. 2, 1129 (Bissell, J., dissenting) (collecting circuit decisions denying trademark protection for color alone); 1 J. Thomas McCarthy, Trademarks & Unfair Competition Secs. 7:16, 7:17 (2d ed. 1984) (color per se, unconfined by any defined design, generally cannot be the subject of a trademark; the use of one color as the color of a product usually does not have trademark significance).

A divided panel of the Federal Circuit held that in the unusual circumstances presented by Owens-Corning, where vast sums had been expended in advertising their pink insulation through the "Pink Panther" ads, and where there was no competitive need for the color pink, a trademark for that color was properly registered as a trademark. Owens-Corning, 774 F.2d at 1128.

In a more recent decision, the Eighth Circuit refused to establish a per se rule prohibiting

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the registration of color as a trademark. Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 223 (8th Cir.1993). In Master Distributors, the district court held, as a matter of law, that color alone could not be protected as a trademark. The court of appeals reversed, declining to establish that as a matter of law a color alone could not be protected. The court ruled that if a party can establish all the normal trademark requirements arising from the color of its product, the party can register...

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