Bound volume 514

Printed on Uncoated Permanent Printing Paper For sale by the U. S. Government Printing Office Superintendent of Documents, Mail Stop: SSOP, Washington, DC 20402-9328 J U S T I C E S
S U P R E M E C O U R T
WILLIAM H. REHNQUIST, Chief Justice.
JOHN PAUL STEVENS, Associate Justice.
SANDRA DAY O’CONNOR, Associate Justice.
ANTHONY M. KENNEDY, Associate Justice.
RUTH BADER GINSBURG, Associate Justice.
LEWIS F. POWELL, Jr., Associate Justice.
WILLIAM J. BRENNAN, Jr., Associate Justice.
HARRY A. BLACKMUN, Associate Justice.
DREW S. DAYS III, Solicitor General.
WILLIAM K. SUTER, Clerk.
FRANK D. WAGNER, Reporter of Decisions.
DALE E. BOSLEY, Marshal.
SHELLEY L. DOWLING, Librarian.
It is ordered that the following allotment be made of the Chief Justice and Associate Justices of this Court among the circuits,pursuant to Title 28, United States Code, Section 42, and that suchallotment be entered of record, effective September 30, 1994, viz.: For the District of Columbia Circuit, William H. Rehnquist, For the First Circuit, David H. Souter, Associate Justice.
For the Second Circuit, Ruth Bader Ginsburg, Associate For the Third Circuit, David H. Souter, Associate Justice.
For the Fourth Circuit, William H. Rehnquist, Chief Justice.
For the Fifth Circuit, Antonin Scalia, Associate Justice.
For the Sixth Circuit, John Paul Stevens, Associate Justice.
For the Seventh Circuit, John Paul Stevens, Associate Justice.
For the Eighth Circuit, Clarence Thomas, Associate Justice.
For the Ninth Circuit, Sandra Day O’Connor, Associate For the Tenth Circuit, Stephen Breyer, Associate Justice.
For the Eleventh Circuit, Anthony M. Kennedy, Associate For the Federal Circuit, William H. Rehnquist, Chief Justice.
(For next previous allotment, and modifications, see 502 U. S., p. vi, 509 U. S., p. v, and 512 U. S., p. v.) QUALITEX CO. v. JACOBSON PRODUCTS CO., INC.
certiorari to the united states court of appeals for Argued January 9, 1995—Decided March 28, 1995 Petitioner Qualitex Company has for years colored the dry cleaning press pads it manufactures with a special shade of green gold.
spondent Jacobson Products (a Qualitex rival) began to use a similarshade on its own press pads, Qualitex registered its color as a trademarkand added a trademark infringement count to the suit it had previouslyfiled challenging Jacobson’s use of the green-gold color.
in the District Court, but the Ninth Circuit set aside the judgment onthe infringement claim because, in its view, the Trademark Act of 1946(Lanham Act) does not permit registration of color alone as a trademark.
Held: The Lanham Act permits the registration of a trademark that con- sists, purely and simply, of a color.
(a) That color alone can meet the basic legal requirements for use as a trademark is demonstrated both by the language of the Act, whichdescribes the universe of things that can qualify as a trademark in thebroadest of terms, 15 U. S. C. § 1127, and by the underlying principlesof trademark law, including the requirements that the mark “identifyand distinguish [the seller’s] goods . . . from those manufactured or soldby others and to indicate [their] source,” ibid., and that it not be “func-tional,” see, e. g., Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,456 U. S. 844, 850, n. 10.
The District Court’s findings (accepted by the Ninth Circuit and here undisputed) show Qualitex’s green-gold color hasmet these requirements.
identify the color as Qualitex’s, it has developed secondary meaning, see,e. g., id., at 851, n. 11, and thereby identifies the press pads’ source.
And, the color serves no other function.
use some color on press pads to avoid noticeable stains, the court foundno competitive need in the industry for the green-gold color, since othercolors are equally usable.) Accordingly, unless there is some special reason that convincingly militates against the use of color alone as atrademark, trademark law protects Qualitex’s use of its green-goldcolor.
(b) Jacobson’s various special reasons why the law should forbid the use of color alone as a trademark—that a contrary holding (1) willproduce uncertainty and unresolvable court disputes about what shadesof a color a competitor may lawfully use; (2) is unworkable in light of QUALITEX CO. v. JACOBSON PRODUCTS CO.
the limited supply of colors that will soon be depleted by competitors;(3) is contradicted by many older cases, including decisions of this Courtinterpreting pre-Lanham Act trademark law; and (4) is unnecessary be-cause firms already may use color as part of a trademark and may relyon “trade dress” protection—are unpersuasive.
Breyer, J., delivered the opinion for a unanimous Court.
Donald G. Mulack argued the cause for petitioner.
him on the briefs were Christopher A. Bloom, Edward J.
Chalfie, Heather C. Steinmeyer, and Ava B. Campagna. Deputy Solicitor General Wallace argued the cause for the United States as amicus curiae urging reversal.
him on the brief were Solicitor General Days, Assistant At-torneys General Hunger and Bingaman, Diane P. Wood,James A. Feldman, William Kanter, Marc Richman, NancyJ. Linck, Albin F. Drost, Nancy C. Slutter, and Linda Mon-cys Isacson. Laurence D. Strick argued the cause and filed a brief for Justice Breyer delivered the opinion of the Court.
The question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U. S. C. §§ 1051–1127 (1988 ed. andSupp. V), permits the registration of a trademark that con- *Briefs of amici curiae urging reversal were filed for the Bar Associa- tion of the District of Columbia by Bruce T. Wieder, Sheldon H. Klein,and Linda S. Paine-Powell; for B. F. Goodrich Co. by Lawrence S. Robbinsand Mary Ann Tucker; for the Crosby Group, Inc., by Robert D. Yeager;for Dr Pepper/Seven-Up Corp. by David C. Gryce; for the Hand ToolsInstitute et al. by James E. Siegel, Witold A. Ziarno, and RosemarieBiondi-Tofano; for Intellectual Property Owners by George R. Powers,Neil A. Smith, and Herbert C. Wamsley; for the International TrademarkAssociation by Christopher C. Larkin, Joan L. Dillon, and Morton DavidGoldberg; and for Owens-Corning Fiberglas Corp. by Michael W. Schwartzand Marc Wolinsky. Arthur M. Handler filed a brief for the Private Label Manufacturers Association as amicus curiae urging affirmance.
sists, purely and simply, of a color.
times, a color will meet ordinary legal trademark require-ments.
And, when it does so, no special legal rule prevents color alone from serving as a trademark.
The case before us grows out of petitioner Qualitex Com- pany’s use (since the 1950’s) of a special shade of green-goldcolor on the pads that it makes and sells to dry cleaning firmsfor use on dry cleaning presses.
son Products (a Qualitex rival) began to sell its own presspads to dry cleaning firms; and it colored those pads a similargreen gold.
In 1991, Qualitex registered the special green- gold color on press pads with the Patent and TrademarkOffice as a trademark.
Qualitex subsequently added a trademark infringe- ment count, 15 U. S. C. § 1114(1), to an unfair competitionclaim, § 1125(a), in a lawsuit it had already filed challengingJacobson’s use of the green-gold color.
Qualitex won the lawsuit in the District Court.
peals for the Ninth Circuit set aside the judgment in Quali-tex’s favor on the trademark infringement claim because, inthat Circuit’s view, the Lanham Act does not permit Quali-tex, or anyone else, to register “color alone” as a trademark.
13 F. 3d 1297, 1300, 1302 (1994).
The Courts of Appeals have differed as to whether or not the law recognizes the use of color alone as a trademark.
Compare NutraSweet Co. v. Stadt Corp., 917 F. 2d 1024, 1028(CA7 1990) (absolute prohibition against protection of coloralone), with In re Owens-Corning Fiberglas Corp., 774 F. 2d1116, 1128 (CA Fed. 1985) (allowing registration of color pinkfor fiberglass insulation), and Master Distributors, Inc. v.
Pako Corp., 986 F. 2d 219, 224 (CA8 1993) (declining to estab-lish per se prohibition against protecting color alone as atrademark).
Therefore, this Court granted certiorari.
QUALITEX CO. v. JACOBSON PRODUCTS CO.
lutely barring the use of color alone, and we reverse thejudgment of the Ninth Circuit.
The Lanham Act gives a seller or producer the exclusive right to “register” a trademark, 15 U. S. C. § 1052 (1988 ed.
and Supp. V), and to prevent his or her competitors fromusing that trademark, § 1114(1).
Act and the basic underlying principles of trademark lawwould seem to include color within the universe of thingsthat can qualify as a trademark.
ham Act describes that universe in the broadest of terms.
It says that trademarks “includ[e] any word, name, symbol,or device, or any combination thereof.” human beings might use as a “symbol” or “device” almostanything at all that is capable of carrying meaning, this lan-guage, read literally, is not restrictive.
Patent and Trademark Office have authorized for use as amark a particular shape (of a Coca-Cola bottle), a particularsound (of NBC’s three chimes), and even a particular scent(of plumeria blossoms on sewing thread).
tration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616(Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17U. S. P. Q. 2d 1238, 1240 (TTAB 1990).
and a fragrance can act as symbols why, one might ask, cana color not do the same? A color is also capable of satisfying the more important part of the statutory definition of a trademark, which re-quires that a person “us[e]” or “inten[d] to use” the mark “to identify and distinguish his or her goods, includinga unique product, from those manufactured or sold byothers and to indicate the source of the goods, even ifthat source is unknown.” True, a product’s color is unlike “fanciful,” “arbitrary,” or“suggestive” words or designs, which almost automatically tell a customer that they refer to a brand.
Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, 9–10 (CA21976) (Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc.,505 U. S. 763, 768 (1992).
or the words “Suntost Marmalade,” on a jar of orange jamimmediately would signal a brand or a product “source”; thejam’s orange color does not do so.
may come to treat a particular color on a product or its pack-aging (say, a color that in context seems unusual, such aspink on a firm’s insulating material or red on the head of alarge industrial bolt) as signifying a brand.
color would have come to identify and distinguish thegoods—i. e., “to indicate” their “source”—much in the waythat descriptive words on a product (say, “Trim” on nail clip-pers or “Car-Freshner” on deodorizer) can come to indicatea product’s origin.
See, e. g., J. Wiss & Sons Co. v. W. E. Bassett Co., 59 C. C. P. A. 1269, 1271 (Pat.), 462 F. 2d 567,569 (1972); Car-Freshner Corp. v. Turtle Wax, Inc., 268F. Supp. 162, 164 (SDNY 1967).
mark law says that the word (e. g., “Trim”), although notinherently distinctive, has developed “secondary meaning.”See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456U. S. 844, 851, n. 11 (1982) (“[S]econdary meaning” is ac-quired when “in the minds of the public, the primary signifi-cance of a product feature . . . is to identify the source of theproduct rather than the product itself ”).
ask, if trademark law permits a descriptive word with sec-ondary meaning to act as a mark, why would it not permit acolor, under similar circumstances, to do the same? We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color aloneas a trademark, where that color has attained “secondarymeaning” and therefore identifies and distinguishes a partic-ular brand (and thus indicates its “source”).
trademark law, by preventing others from copying a source-identifying mark, “reduce[s] the customer’s costs of shopping QUALITEX CO. v. JACOBSON PRODUCTS CO.
and making purchasing decisions,” 1 J. McCarthy, McCarthyon Trademarks and Unfair Competition § 2.01[2], p. 2–3 (3ded. 1994) (hereinafter McCarthy), for it quickly and easilyassures a potential customer that this item—the item withthis mark—is made by the same producer as other similarlymarked items that he or she liked (or disliked) in the past.
At the same time, the law helps assure a producer that it(and not an imitating competitor) will reap the financial,reputation-related rewards associated with a desirable prod-uct.
The law thereby “encourage[s] the production of qual- ity products,” ibid., and simultaneously discourages thosewho hope to sell inferior products by capitalizing on a con-sumer’s inability quickly to evaluate the quality of an itemoffered for sale.
See, e. g., 3 L. Altman, Callmann on Unfair Competition, Trademarks and Monopolies § 17.03 (4th ed.
1983); Landes & Posner, The Economics of Trademark Law,78 T. M. Rep. 267, 271–272 (1988); Park ’N Fly, Inc. v. DollarPark & Fly, Inc., 469 U. S. 189, 198 (1985); S. Rep. No. 100–515, p. 4 (1988).
It is the source-distinguishing ability of a mark—not its ontological status as color, shape, fragrance,word, or sign—that permits it to serve these basic purposes.
See Landes & Posner, Trademark Law: An Economic Per-spective, 30 J. Law & Econ. 265, 290 (1987).
reason, it is difficult to find, in basic trademark objectives, areason to disqualify absolutely the use of a color as a mark.
Neither can we find a principled objection to the use of color as a mark in the important “functionality” doctrine oftrademark law.
The functionality doctrine prevents trade- mark law, which seeks to promote competition by protectinga firm’s reputation, from instead inhibiting legitimate compe-tition by allowing a producer to control a useful product fea-ture.
It is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly overnew product designs or functions for a limited time, 35U. S. C. §§ 154, 173, after which competitors are free to usethe innovation.
If a product’s functional features could be used as trademarks, however, a monopoly over such featurescould be obtained without regard to whether they qualify aspatents and could be extended forever (because trademarksmay be renewed in perpetuity).
See Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 119–120 (1938) (Brandeis, J.); In-wood Laboratories, Inc., supra, at 863 (White, J., concurringin result) (“A functional characteristic is ‘an important ingre-dient in the commercial success of the product,’ and, afterexpiration of a patent, it is no more the property of the origi-nator than the product itself ”) (citation omitted).
ality doctrine therefore would require, to take an imaginaryexample, that even if customers have come to identify thespecial illumination-enhancing shape of a new patented lightbulb with a particular manufacturer, the manufacturer maynot use that shape as a trademark, for doing so, after thepatent had expired, would impede competition—not by pro-tecting the reputation of the original bulb maker, but byfrustrating competitors’ legitimate efforts to produce anequivalent illumination-enhancing bulb.
Co., supra, at 119–120 (trademark law cannot be used to ex-tend monopoly over “pillow” shape of shredded wheat biscuitafter the patent for that shape had expired).
consequently has explained that, “[i]n general terms, a prod-uct feature is functional,” and cannot serve as a trademark,“if it is essential to the use or purpose of the article or ifit affects the cost or quality of the article,” that is, if exclu-sive use of the feature would put competitors at a signifi-cant non-reputation-related disadvantage.
tories, Inc., supra, at 850, n. 10.
plays an important role (unrelated to source identification) inmaking a product more desirable, sometimes it does not.
And, this latter fact—the fact that sometimes color is notessential to a product’s use or purpose and does not affectcost or quality—indicates that the doctrine of “functionality”does not create an absolute bar to the use of color alone as amark.
See Owens-Corning, 774 F. 2d, at 1123 (pink color of insulation in wall “performs no non-trademark function”).
QUALITEX CO. v. JACOBSON PRODUCTS CO.
It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as a trademark.
It can act as a symbol that distinguishes a firm’s goods andidentifies their source, without serving any other significantfunction.
See U. S. Dept. of Commerce, Patent and Trade- mark Office, Trademark Manual of Examining Procedure§ 1202.04(e), p. 1202–13 (2d ed. May, 1993) (hereinafter PTOManual) (approving trademark registration of color alonewhere it “has become distinctive of the applicant’s goodsin commerce,” provided that “there is [no] competitive needfor colors to remain available in the industry” and the coloris not “functional”); see also 1 McCarthy §§ 3.01[1], 7.26,pp. 3–2, 7–113 (“requirements for qualification of a word orsymbol as a trademark” are that it be (1) a “symbol,” (2)“use[d] . . . as a mark,” (3) “to identify and distinguish theseller’s goods from goods made or sold by others,” but thatit not be “functional”).
case, entered findings (accepted by the Ninth Circuit) thatshow Qualitex’s green-gold press pad color has met theserequirements.
The green-gold color acts as a symbol.
Having developed secondary meaning (for customers identi-fied the green-gold color as Qualitex’s), it identifies the presspads’ source.
And, the green-gold color serves no other (Although it is important to use some color on press pads to avoid noticeable stains, the court found “nocompetitive need in the press pad industry for the green-goldcolor, since other colors are equally usable.” Accordingly, unless there is some special rea- son that convincingly militates against the use of color aloneas a trademark, trademark law would protect Qualitex’s useof the green-gold color on its press pads.
Respondent Jacobson Products says that there are four special reasons why the law should forbid the use of color First, Jacobson says that, if the law permits the use of color as a trademark, it will produce uncertainty and unre-solvable court disputes about what shades of a color a com-petitor may lawfully use.
twilight mist) will affect perceptions of protected color, com-petitors and courts will suffer from “shade confusion” as theytry to decide whether use of a similar color on a similar prod-uct does, or does not, confuse customers and thereby infringea trademark.
Jacobson adds that the “shade confusion” problem is “more difficult” and “far different from” the “de-termination of the similarity of words or symbols.” We do not believe, however, that color, in this respect, is Courts traditionally decide quite difficult questions about whether two words or phrases or symbols are suffi-ciently similar, in context, to confuse buyers.
had to compare, for example, such words as “Bonamine” and“Dramamine” (motion-sickness remedies); “Huggies” and“Dougies” (diapers); “Cheracol” and “Syrocol” (cough syrup);“Cyclone” and “Tornado” (wire fences); and “Mattres” and“1–800–Mattres” (mattress franchisor telephone numbers).
See, e. g., G. D. Searle & Co. v. Chas. Pfizer & Co., 265 F. 2d385, 389 (CA7 1959); Kimberly-Clark Corp. v. H. DouglasEnterprises, Ltd., 774 F. 2d 1144, 1146–1147 (CA Fed. 1985);Upjohn Co. v. Schwartz, 246 F. 2d 254, 262 (CA2 1957); Han-cock v. American Steel & Wire Co. of N. J., 40 C. C. P. A.
(Pat.) 931, 935, 203 F. 2d 737, 740–741 (1953); Dial-A-Mattress Franchise Corp. v. Page, 880 F. 2d 675, 678 (CA21989).
Legal standards exist to guide courts in making such See, e. g., 2 McCarthy § 15.08; 1 McCarthy §§ 11.24–11.25 (“[S]trong” marks, with greater secondarymeaning, receive broader protection than “weak” marks).
We do not see why courts could not apply those standardsto a color, replicating, if necessary, lighting conditions under QUALITEX CO. v. JACOBSON PRODUCTS CO.
which a colored product is normally sold.
mark Protection in Color: Do It By the Numbers!, 84 T. M.
Rep. 379, 405 (1994).
in cases where a trademark consists of a color plus a design,i. e., a colored symbol such as a gold stripe (around a sewerpipe), a yellow strand of wire rope, or a “brilliant yellow”band (on ampules).
See, e. g., Youngstown Sheet & Tube Co. v. Tallman Conduit Co., 149 U. S. P. Q. 656, 657 (TTAB 1966);Amstead Industries, Inc. v. West Coast Wire Rope & Rig-ging Inc., 2 U. S. P. Q. 2d 1755, 1760 (TTAB 1987); In reHodes-Lange Corp., 167 U. S. P. Q. 255, 256 (TTAB 1970).
Second, Jacobson argues, as have others, that colors are in See, e. g., NutraSweet Co., 917 F. 2d, at 1028; Campbell Soup Co. v. Armour & Co., 175 F. 2d 795, 798 (CA31949).
Jacobson claims that, if one of many competitors can appropriate a particular color for use as a trademark, andeach competitor then tries to do the same, the supply of col-ors will soon be depleted.
argument would concede that “[h]undreds of color pigmentsare manufactured and thousands of colors can be obtained bymixing.” L. Cheskin, Colors: What They Can Do For You 47 But, it would add that, in the context of a particular product, only some colors are usable.
cards colors that, say, for reasons of customer appeal, are notusable, and adds the shades that competitors cannot use lestthey risk infringing a similar, registered shade, then one isleft with only a handful of possible colors.
circumstances, to permit one, or a few, producers to use col-ors as trademarks will “deplete” the supply of usable colorsto the point where a competitor’s inability to find a suitablecolor will put that competitor at a significant disadvantage.
This argument is unpersuasive, however, largely because it relies on an occasional problem to justify a blanket prohibi-tion.
When a color serves as a mark, normally alternative colors will likely be available for similar use by others.
e. g., Owens-Corning, 774 F. 2d, at 1121 (pink insulation).
Moreover, if that is not so—if a “color depletion” or “colorscarcity” problem does arise—the trademark doctrine of“functionality” normally would seem available to prevent theanticompetitive consequences that Jacobson’s argument pos-its, thereby minimizing that argument’s practical force.
The functionality doctrine, as we have said, forbids the use of a product’s feature as a trademark where doing so will puta competitor at a significant disadvantage because the fea-ture is “essential to the use or purpose of the article” or“affects [its] cost or quality.” tects competitors against a disadvantage (unrelated to recog-nition or reputation) that trademark protection might other-wise impose, namely, their inability reasonably to replicateimportant non-reputation-related product features.
ample, this Court has written that competitors might be freeto copy the color of a medical pill where that color serves toidentify the kind of medication (e. g., a type of blood medi-cine) in addition to its source.
(“[S]ome patients commingle medications in a container andrely on color to differentiate one from another”); see also J.
Ginsburg, D. Goldberg, & A. Greenbaum, Trademark and Un-fair Competition Law 194–195 (1991) (noting that drug colorcases “have more to do with public health policy” regardinggeneric drug substitution “than with trademark law”).
And, the federal courts have demonstrated that they canapply this doctrine in a careful and reasoned manner, withsensitivity to the effect on competition.
not comment on the merits of specific cases, we note thatlower courts have permitted competitors to copy the greencolor of farm machinery (because customers wanted theirfarm equipment to match) and have barred the use of blackas a trademark on outboard boat motors (because black hasthe special functional attributes of decreasing the apparentsize of the motor and ensuring compatibility with many dif-ferent boat colors).
See Deere & Co. v. Farmhand, Inc., 560 QUALITEX CO. v. JACOBSON PRODUCTS CO.
F. Supp. 85, 98 (SD Iowa 1982), aff ’d, 721 F. 2d 253 (CA81983); Brunswick Corp. v. British Seagull Ltd., 35 F. 3d 1527,1532 (CA Fed. 1994), cert. pending, No. 94–1075; see alsoNor-Am Chemical v. O. M. Scott & Sons Co., 4 U. S. P. Q. 2d1316, 1320 (ED Pa. 1987) (blue color of fertilizer held func-tional because it indicated the presence of nitrogen).
Restatement (Third) of Unfair Competition adds that, if adesign’s “aesthetic value” lies in its ability to “confe[r] a sig-nificant benefit that cannot practically be duplicated by theuse of alternative designs,” then the design is “functional.”Restatement (Third) of Unfair Competition § 17, Comment c,pp. 175–176 (1993).
The “ultimate test of aesthetic function- ality,” it explains, “is whether the recognition of trademarkrights would significantly hinder competition.” The upshot is that, where a color serves a significant non- trademark function—whether to distinguish a heart pill froma digestive medicine or to satisfy the “noble instinct for giv-ing the right touch of beauty to common and necessarythings,” G. Chesterton, Simplicity and Tolstoy 61 (1912)—courts will examine whether its use as a mark would permitone competitor (or a group) to interfere with legitimate(nontrademark-related) competition through actual or poten-tial exclusive use of an important product ingredient.
examination should not discourage firms from creating es-thetically pleasing mark designs, for it is open to their com-petitors to do the same.
See, e. g., W. T. Rogers Co. v. Keene, 778 F. 2d 334, 343 (CA7 1985) (Posner, J.).
it should prevent the anticompetitive consequences of Jacob-son’s hypothetical “color depletion” argument, when, andif, the circumstances of a particular case threaten “colordepletion.” Third, Jacobson points to many older cases—including Su- preme Court cases—in support of its position.
Court described the common-law definition of trademarkrather broadly to “consist of a name, symbol, figure, letter,form, or device, if adopted and used by a manufacturer or merchant in order to designate the goods he manufacturesor sells to distinguish the same from those manufactured orsold by another.” McLean v. Fleming, 96 U. S. 245, 254.
Yet, in interpreting the Trademark Acts of 1881 and 1905,21 Stat. 502, 33 Stat. 724, which retained that common-lawdefinition, the Court questioned “[w]hether mere color canconstitute a valid trade-mark,” A. Leschen & Sons Rope Co.
v. Broderick & Bascom Rope Co., 201 U. S. 166, 171 (1906),and suggested that the “product including the coloring mat-ter is free to all who make it,” Coca-Cola Co. v. Koke Co.
of America, 254 U. S. 143, 147 (1920).
statements amounted to dicta, lower courts interpreted themas forbidding protection for color alone.
Soup Co., 175 F. 2d, at 798, and n. 9; Life Savers Corp. v.
Curtiss Candy Co., 182 F. 2d 4, 9 (CA7 1950) (quoting Camp-bell Soup, supra, at 798).
These Supreme Court cases, however, interpreted trade- mark law as it existed before 1946, when Congress enactedthe Lanham Act.
and liberalized the common law to “dispense with mere tech-nical prohibitions,” S. Rep. No. 1333, 79th Cong., 2d Sess., 3(1946), most notably, by permitting trademark registrationof descriptive words (say, “U-Build-It” model airplanes)where they had acquired “secondary meaning.” crombie & Fitch Co., 537 F. 2d, at 9 (Friendly, J.).
ham Act extended protection to descriptive marks by mak-ing clear that (with certain explicit exceptions not relevanthere) “nothing . . . shall prevent the registration of a markused by the applicant which has become distinctiveof the applicant’s goods in commerce.” This language permits an ordinary word, normally used fora nontrademark purpose (e. g., description), to act as a trade-mark where it has gained “secondary meaning.” QUALITEX CO. v. JACOBSON PRODUCTS CO.
would appear to apply to color as well.
Federal Circuit considered the significance of the LanhamAct’s changes as they related to color and held that trade-mark protection for color was consistent with the “jurisprudence under the Lanham Act developed in ac-cordance with the statutory principle that if a mark iscapable of being or becoming distinctive of [the] appli-cant’s goods in commerce, then it is capable of servingas a trademark.” Owens-Corning, 774 F. 2d, at 1120.
In 1988, Congress amended the Lanham Act, revising por- tions of the definitional language, but left unchanged the lan-guage here relevant.
§ 134, 102 Stat. 3946, 15 U. S. C. § 1127.
It enacted these amendments against the following back-ground: (1) the Federal Circuit had decided Owens-Corning;(2) the Patent and Trademark Office had adopted a clearpolicy (which it still maintains) permitting registrationof color as a trademark, see PTO Manual § 1202.04(e) (atp. 1200–12 of the January 1986 edition and p. 1202–13 of theMay 1993 edition); and (3) the Trademark Commission hadwritten a report, which recommended that “the terms ‘sym-bol, or device’ . . . not be deleted or narrowed to precluderegistration of such things as a color, shape, smell, sound, orconfiguration which functions as a mark,” The United StatesTrademark Association Trademark Review Commission Re-port and Recommendations to USTA President and Board ofDirectors, 77 T. M. Rep. 375, 421 (1987); see also 133 Cong.
Rec. 32812 (1987) (statement of Sen. DeConcini) (“The bill Iam introducing today is based on the Commission’s reportand recommendations”).
gests that the language “any word, name, symbol, or device,”15 U. S. C. § 1127, had come to include color.
amended the statute, Congress retained these terms.
deed, the Senate Report accompanying the Lanham Act revi-sion explicitly referred to this background understanding, insaying that the “revised definition intentionally retains . . .
the words ‘symbol or device’ so as not to preclude the regis-tration of colors, shapes, sounds or configurations where theyfunction as trademarks.” addition, the statute retained language providing that “[n]otrademark by which the goods of the applicant may be distin-guished from the goods of others shall be refused registra-tion . . . on account of its nature” (except for certain specifiedreasons not relevant here).
This history undercuts the authority of the precedent on on statements in Supreme Court opinions that interpretedpre-Lanham Act trademark law and were not directly re-lated to the holdings in those cases.
the Federal Circuit was right in 1985 when it found that the1946 Lanham Act embodied crucial legal changes that liber-alized the law to permit the use of color alone as a trademark(under appropriate circumstances).
ham Act’s changes left the courts free to reevaluate the pre-existing legal precedent which had absolutely forbidden theuse of color alone as a trademark.
reenacted the terms “word, name, symbol, or device” in 1988,it did so against a legal background in which those terms hadcome to include color, and its statutory revision embracedthat understanding.
Fourth, Jacobson argues that there is no need to permit color alone to function as a trademark because a firm alreadymay use color as part of a trademark, say, as a colored circleor colored letter or colored word, and may rely upon “tradedress” protection, under § 43(a) of the Lanham Act, if a com-petitor copies its color and thereby causes consumer confu-sion regarding the overall appearance of the competing prod-ucts or their packaging, see 15 U. S. C. § 1125(a) (1988 ed.,Supp. V).
The first part of this argument begs the question.
One can understand why a firm might find it difficult to placea usable symbol or word on a product (say, a large industrial QUALITEX CO. v. JACOBSON PRODUCTS CO.
bolt that customers normally see from a distance); and, insuch instances, a firm might want to use color, pure and sim-ple, instead of color as part of a design.
ond portion of the argument convincing.
helps the holder of a mark in many ways that “trade dress”protection does not.
vent importation of confusingly similar goods); § 1072 (con-structive notice of ownership); § 1065 (incontestible status);§ 1057(b) (prima facie evidence of validity and ownership).
Thus, one can easily find reasons why the law might providetrademark protection in addition to trade dress protection.
Having determined that a color may sometimes meet the basic legal requirements for use as a trademark and that re-spondent Jacobson’s arguments do not justify a special legalrule preventing color alone from serving as a trademark(and, in light of the District Court’s here undisputed findingsthat Qualitex’s use of the green-gold color on its press padsmeets the basic trademark requirements), we conclude thatthe Ninth Circuit erred in barring Qualitex’s use of color asa trademark.
For these reasons, the judgment of the Ninth

Source: http://www.todaysengineer.org/2003/Feb/files/514U.S.159.pdf