Case(s): Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)
Qualitex Company manufactures dry cleaning press pads in a specific shade of green gold. In 1989 Jacobson Products (a Qualitex rival) began to sell its own press pads to dry cleaning firms; and it colored those pads a similar green gold. In 1991, Qualitex registered the special green gold color on press pads with the USPTO as a trademark. Qualitex subsequently added a trademark infringement count to an unfair competition claim in a lawsuit it had already filed challenging Jacobson’s use of the green gold color.
District Court & Ninth Circuit Appeal
Qualitex prevailed before the District Court, but the Court of Appeals for the Ninth Circuit set aside the judgment in Qualitex’s favor on the trademark infringement claim because, in that Circuit’s view, the Lanham Act does not permit Qualitex, or anyone else, to register “color alone” as a trademark.
Supreme Court Decision
Siding with Qualitex, the Supreme Court held that the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color. Specifically, the Supreme Court held in its March 1995 decision that …
(a) That color alone can meet the basic legal requirements for use as a trademark is demonstrated both by the language of the Act, which describes the universe of things that can qualify as a trademark in the broadest of terms, 15 U. S. C. § 1127, and by the underlying principles of trademark law, including the requirements that the mark “identify and distinguish [the seller’s] goods … from those manufactured or sold by others and to indicate [their] source,” ibid., and that it not be “functional.”
The District Court’s findings (accepted by the Ninth Circuit and here undisputed) show Qualitex’s green-gold color has met these requirements. It acts as a symbol. Because customers identify the color as Qualitex’s, it has developed secondary meaning, and thereby identifies the press pads’ source. And the color serves no other function. (Although it is important to use some color on press pads to avoid noticeable stains, the court found no competitive need in the industry for the green-gold color, since other colors are equally usable.) Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law protects Qualitex’s use of its green-gold color.
(b) Jacobson’s various special reasons why the law should forbid the use of color alone as a trademark – that a contrary holding:
(1) will produce uncertainty and unresolvable court disputes about what shades of a color a competitor may lawfully use;
(2) is unworkable in light of the limited supply of colors that will soon be depleted by competitors;
(3) is contradicted by many older cases, including decisions of this Court interpreting pre-Lanham Act trademark law; and
(4) is unnecessary because firms already may use color as part of a trademark and may rely on “trade dress” protection – are unpersuasive.