Owens-Corning Fiberglas Corp., In re

• Decision Date: 08 October 1985
• Docket Number: OWENS-CORNING,No. 84-1416,84-1416
• Citation: 774 F.2d 1116,227 USPQ 417
• Parties: , 227 U.S.P.Q. 417 In reFIBERGLAS CORPORATION. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

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

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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.

I.

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

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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-

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; 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

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