Owens-Corning Fiberglas Corp., In re, OWENS-CORNING

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Citation774 F.2d 1116,227 USPQ 417
Docket NumberOWENS-CORNING,No. 84-1416,84-1416
Parties, 227 U.S.P.Q. 417 In reFIBERGLAS CORPORATION. Appeal
Decision Date08 October 1985

Page 1116

774 F.2d 1116
54 USLW 2232, 227 U.S.P.Q. 417
Appeal No. 84-1416.
United States Court of Appeals,
Federal Circuit.
Oct. 8, 1985.

Page 1118

Patrick P. Pacella, Owens-Corning Fiberglas Corp., Toledo, Ohio, argued for appellant; with him on brief was Mark C. Schaffer, Emch, Schaffer & Schaub Co., L.P.A., Toledo, Ohio.

Michael L. Gellner, Asst. Sol., U.S. Patent and Trademark Office, Arlington, Va., argued for appellee; with him on brief were Joseph F. Nakamura, Sol. and Jere W. Sears, Deputy Sol., Washington, D.C.

Before NEWMAN, Circuit Judge, COWEN, Senior Circuit Judge, and BISSELL, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Owens-Corning Fiberglas Corporation (OCF) appeals from the decision of the United States Patent and Trademark Office's Trademark Trial and Appeal Board (the Board) affirming the examining attorney's denial of registration of the color "pink" as a trademark for fibrous glass residential insulation. We reverse.


Alleging use in commerce since 1956, OCF applied on January 25, 1980, application Serial No. 247,707, for registration on the Principal Register of the color "pink" as uniformly applied to OCF's fibrous glass residential insulation. The Board held that the overall color of goods is capable of functioning as a trademark, but affirmed the examiner's denial of registration on the ground that OCF had not adequately demonstrated that the color "pink" is distinctive of OCF's goods. In re Owens-Corning Fiberglas Corp., 221 USPQ 1195 (TTAB 1984).

The Board's conclusion that there is no inherent bar to trademark registration of the color of goods, when the color is an overall color rather than in the form of a design, is in harmony with modern trademark theory and jurisprudence. Prior to passage of the Trademark Act of 1946, 15 U.S.C. Sec. 1051 et seq. (the Lanham Act), color alone could not be registered as a trademark. In 1906 the Supreme Court wrote:

Whether mere color can constitute a valid trade-mark may admit of doubt. Doubtless it may, if it be impressed in a particular design, as a circle, square, triangle, a cross, or a star. But the authorities do not go farther than this.

A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 171, 26 S.Ct. 425, 426, 50 L.Ed. 710 (1906). The Patent Office and the courts followed this view. For example, applications were rejected to register the color violet for gasoline, In re General Petroleum Corp. of California, 49 F.2d 966, 9 USPQ 511 (CCPA 1931); and a blue-and-aluminum color for oil well reamers, In re Security Engineering Co., Inc., 113 F.2d 494, 46 USPQ 219 (CCPA 1940).

Despite the prohibition on registration, during this early period some courts accorded owners of color marks protection against unfair competition upon a showing of secondary meaning in the mark. In Clifton Mfg. Co. v. Crawford-Austin Mfg. Co., 12 S.W.2d 1098 (Tex.Civ.App.1929), for example, the defendant was enjoined from copying plaintiff's distinctive reddish-brown coloring for tents, tarpaulins, and wagon covers; and in Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co., 147 F.2d 407, 64 USPQ 348 (6th Cir.1945), the color yellow for taxicab services received

Page 1119

protection on principles of unfair competition.

The principal purpose of the Lanham Act was the modernization of trademark law, to facilitate commerce and to protect the consumer. As noted by the Supreme Court in Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., --- U.S. ----, 105 S.Ct. 658, 664, 83 L.Ed.2d 582, 224 USPQ 327, 331 (1985):

The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the good will of his business and to protect the ability of consumers to distinguish among competing producers.

Section 45 of the Act defines "trademark" to include "any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." This was a departure from the past, as prior statutes only permitted registration of "technical" common law trademarks. See generally W. Derenberg, Trade-Mark Protection and Unfair Trading Secs. 16, 18, 23 (1936).

The preamble of section 2 of the Lanham Act states that "[n]o trademark ... shall be refused registration on the principal register on account of its nature", unless one or more specific exceptions to registrability set forth in that section apply. Color is not such an exception.

Congress intended, as shown in the legislative history of the Lanham Act, a broad revision of trademark law achieving "substantive as distinguished from merely procedural rights in trade-marks". S.Rep. No. 1333, 79th Cong., 2d Sess. 5, reprinted in 1946 U.S.Code Cong. & Ad.News 1274, 1277. Quoting this report, the Supreme Court has reiterated that:

Congress determined that "a sound public policy requires that trademarks should receive nationally the greatest protection that can be given them."

Park 'N Fly, 105 S.Ct. at 661, 224 USPQ at 329.

Implementing this intent, post-Lanham Act courts have declined to be bound by prior decisional law that appeared inconsistent with its purpose. Recognizing the need of business to protect its goodwill and the need of the public to be protected against spurious goods, our predecessor court remarked:

The legislative history of the Act as a whole describes its objective as making registration "more liberal," dispensing with "mere technical prohibitions and arbitrary provisions" and modernizing the trademark statutes "so that they will conform to legitimate present-day business practice." The basic goal of the Act, which dealt with a good deal more than registration, was the "protection of trademarks, securing to the owner the good will of his business and protecting the public against spurious and falsely marked goods." Accordingly, we consider the pre-Lanham Act decisions presented here to be inapt.

In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1360, 177 USPQ 563, 566 (CCPA 1973) (footnotes omitted).

Under the Lanham Act trademark registration became available to many types of previously excluded indicia. Change was gradual and evolutionary, as the Patent and Trademark Office and the courts were presented with new concepts. Registration has been granted, for example, for containers; 1 product configurations; 2 and packaging, 3 even if subject to design patent protection-

Page 1120

; 4 for tabs having a particular location on a garment; 5 slogans; 6 sounds; 7 ornamental labels; 8 and goods which take the form of the mark itself. 9 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 applicant's goods in commerce, then it is capable of serving as a trademark.

Color marks, as other indicia, were no longer barred from registration. As for all marks, compliance with the legal requirements for registration depends on the particular mark and its circumstances of use. In determining registrability of color marks, courts have considered factors such as the nature of the goods, how the color is used, the number of colors or color combinations available, the number of competitors, and customary marketing practices. In the case of Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798, 81 USPQ 430, 432 (3d Cir.), cert. denied, 338 U.S. 847, 70 S.Ct. 88, 94 L.Ed. 518, 83 USPQ 543 (1949), the court refused to protect the red and white colors of Campbell's labels on the ground that if Campbell were to "monopolize red in all of its shades" competition would be affected in an industry where colored labels were customary.

The court in Campbell Soup referred to the color depletion theory: that there are a limited number of colors in the palette, and that it is not wise policy to foster further limitation by permitting trademark registrants to deplete the reservoir. See, e.g., Diamond Match Co. v. Saginaw Match Co., 142 F. 727 (6th Cir.), cert. denied, 203 U.S. 589, 27 S.Ct. 776, 51 L.Ed. 330 (1906); International Braid Co. v. Thomas French & Sons, Ltd., 150 F.2d 142, 66 USPQ 109 (CCPA 1945). This theory is not faulted for appropriate application, but following passage of the Lanham Act courts have declined to perpetuate its per se prohibition which is in conflict with the liberating purposes of the Act.

Note the following examples where, in determining registrability of trademarks based on color, the Lanham Act has been applied with exercise of judgment, as Congress intended. In In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (CCPA 1960), the court allowed registration of a square red label for use on automobile trailer windows wherein the only distinctiveness of the label was its color. In In re Data Packaging Corp., 453 F.2d 1300, 172 USPQ 396 (CCPA 1972), the court allowed registration of a mark consisting of a colored band applied to a computer tape reel of contrasting color. In Plastilite Corp. v. Kassnar Imports, 508 F.2d 824, 184 USPQ 348 (CCPA 1975), registration was denied to a combination of yellow and orange colors for fishing floats, on the basis that the color scheme lacked distinctiveness. In In re Shaw, 184 USPQ 253 (TTAB 1974), the Board denied trademark registration for green suede book covers on the ground of lack of distinctiveness. The standard for registrability was that the color be arbitrarily applied to the goods, in a distinctive way. Contrary to an absolute prohibition on registrability of color marks, administrative and judicial implementation of the statute illustrates that each case is decided upon its facts.

As with utilitarian features in general, when the color applied to goods serves a primarily utilitarian purpose it is not subject

Page 1121

to protection as a trademark. See, e.g., In re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (CCPA 1963) (registration of...

To continue reading

Request your trial
167 cases
  • Weems Indus., Inc. v. Teknor Apex Co.
    • United States
    • United States District Courts. 8th Circuit. Northern District of Iowa
    • 18 Mayo 2021
    ...a utilitarian purpose." Master Distribs., Inc. v. Pako Corp. , 986 F.2d 219, 224 (8th Cir. 1993) ( In re Owens-Corning Fiberglas Corp. , 774 F.2d 1116, 1120 (Fed. Cir. 1985) ). Additionally, because color on its own, like a descriptive mark, cannot be inherently distinctive, the color must ......
  • Plasticolor Molded Products v. Ford Motor Co., CV 85-3863-AK (Tx).
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • 28 Abril 1989
    ...... See, e.g., Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195 (C.C.P.A.1969) (figure eight ... See, e.g., In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir.1985) (protecting distinctive ......
  • Cowboys Football Club v. America's Team Properties, Civil Action No. 3:06-CV-1906-K.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • 30 Marzo 2009
    ...Pactel Teletrac, 77 F.3d 1372, 1375 (Fed.Cir.1996), and media outlets such as television and radio, In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed.Cir.1985). In addition, courts have recognized that "abbreviations and nicknames of trademarks or names used only by the public g......
  • Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • 5 Septiembre 2012
    ...§ 1051 et seq., the status of single-color trademarks rested on uncertain ground. See generally In re Owens–Corning Fiberglas Corp., 774 F.2d 1116, 1118–19 (Fed.Cir.1985) (“Owens–Corning ”). Although as early as 1906 the Supreme Court had expressed a Delphic and suitably ambiguous skepticis......
  • Request a trial to view additional results
1 firm's commentaries
  • TTAB: Black Color Mark For Flower Boxes Won’t Fly
    • United States
    • Mondaq United States
    • 9 Julio 2013
    ...marks carry a difficult burden in demonstrating distinctiveness and trademark character" (quoting In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1127, 227 U.S.P.Q. 417, 424 (Fed. Cir. The TTAB was not persuaded by the applicant's evidence, and held that the applicant failed to meet its......
5 books & journal articles
  • Do Not Discriminate - A Guiding Principle of Patent Reform
    • United States
    • ABA General Library Landslide No. 12-5, May 2020
    • 5 Mayo 2020
    ...2012). 59. TMEP, supra note 1, § 1212.04. 60. Id. § 1212.05. 61. Id. § 1212.06. 62. Id. ; see also In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985). 63. See In re Van Valkenburg, 97 U.S.P.Q.2d 1757, 1767 (T.T.A.B. 2011) (finding “no basis on which to conclude that t......
  • All Patents Are Not Created Equal: Sovereign Immunity
    • United States
    • ABA General Library Landslide No. 10-3, January 2018
    • 1 Enero 2018
    ...Endnotes 1. 514 U.S. 159, 170–71 (1995) (quoting McLean v. Fleming, 96 U.S. 245, 254 (1877)). 2. 15 U.S.C. § 1127. 3. 514 U.S. at 174. 4. 774 F.2d 1116, 1127–28 (Fed. Cir. 1985). 5. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1202.05 (Oct. 2017). 6. Wal-......
  • To Create and Own a Nontraditional Trademark, Just Follow Tradition
    • United States
    • ABA General Library Landslide No. 10-3, January 2018
    • 1 Enero 2018
    ...Endnotes 1. 514 U.S. 159, 170–71 (1995) (quoting McLean v. Fleming, 96 U.S. 245, 254 (1877)). 2. 15 U.S.C. § 1127. 3. 514 U.S. at 174. 4. 774 F.2d 1116, 1127–28 (Fed. Cir. 1985). 5. U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1202.05 (Oct. 2017). 6. Wal-......
  • Functionality Crumbles under Pocky
    • United States
    • ABA General Library Landslide No. 14-1, September 2021
    • 1 Septiembre 2021
    ...Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). 22. Qualitex , 514 U.S. at 165. 23. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1128 (Fed. Cir. 1985). 24. Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp., No. 15-5477, 2019 U.S. Dist. LEXIS 230340, at *21 (D.N.J. July ......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT