Case Briefs

In re Owens-Corning Fiberglas Corp.

Case(s): In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)

In In re Owens-Corning Fiberglas Corp.,” the United States Court of Appeals for the Federal Circuit considered whether the Federal Circuit should construe the Lanham Act, post-Lanham Act case law, and federal policy interests to protect color alone as a trademark.

USPTO and TTAB Determinations

On January 25, 1980 when Owens-Corning Fiberglas Corp. (“OCF”), a manufacturer of fibrous glass home insulation, applied with the United States Patent and Trademark Office (Office) for trademark registration of the color pink, which OCF had appliedto the entire surface of OCF’s insulation product. OCF argued that the pink hue should be registered under section 1052(f) of the Lanham Act, which provides for the registration of marks that have become distinctive of the registrant’s goods in commerce.

To establish acquired distinctiveness, OCF presented substantial evidence to the Office in support of OCF’s registration application. Among other things, OCF submitted the affidavit testimony of its Vice President of Marketing Communications. The affidavit stated that OCF had used OCF’s pink mark in conjunction with OCF home insulation since 1956. The affidavit further noted that OCF had spent more than 42 million dollars from 1972 to 1981 advertising OCF’s pink product on television and radio, and in newspapers and magazines. OCF also pointed to results of an independent survey showed that consumer recognition of OCF as the manufacturer of pink insulation rose from forty-one percent in 1980 to fifty percent in 1981.

Despite such evidence, the USPTO found OCF’s pink mark unregistrable as a trademark for OCF home insulation. Specifically, the Examiner relied on case precedent to conclude that color alone applied to the entire surface of a product could not function as a trademark.

OCF appealed the Examiner’s decision to the Trademark Trial and Appeal Board (“TTAB”), which also refused to register the mark. While the TTAB held that the overall color of goods is capable of functioning as a trademark, it 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.

The Federal Circuit’s Decision

OCF appealed the decision of the TTAB affirming the examining attorney’s denial of registration of the color “pink” as a trademark for fibrous glass residential insulation to the Federal Circuit, which reversed. In October 1985, the Federal Circuit Court of Appeals held that Owens-Corning was entitled to register the color “pink” as a trademark for its fibrous glass residential insulation.

Among other things, the Federal Circuit, stated, “We agree with the Board that the color ‘pink’ has no utilitarian purpose, does not deprive competitors of any reasonable right or competitive need, and is not barred from registration on the basis of functionality. The Board also correctly observed that even if the ‘pink’ color is considered to be ornamental, this does not prevent it from acting as a trademark.”

“We conclude that OCF’s use of the color ‘pink’ performs no non-trademark function, and is consistent with the commercial and public purposes of trademarks. A pink color mark registered for fibrous glass insulation does not confer a ‘monopoly’ or act as a barrier to entry in the market. It has no relationship to production of fibrous glass insulation,” according to the Federal Circuit. “It serves the classical trademark function of indicating the origin of the goods, and thereby protects the public.”

The Bottom Line: On the totality of the evidence, the appeals court determined that “the Board’s finding that the color ‘pink’ does not function as a trademark for OCF’s fibrous glass residential insulation is clearly erroneous.”