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U.S. Federal Appeals Court affirms Trademark Trial and Appeal Board decision on color marks

5/7/25

By: James V. Lovett

On April 29, 2025, the United States Court of Appeals for the Federal Circuit affirmed a United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board decision in In re: PT Medisafe Technologies. This case involved the Appeal Board’s decision to deny registration of a color mark. The application was for a particular dark green that was used on the company’s medical examination gloves. The USPTO had denied the application, finding that the mark was not inherently distinctive and that it was generic, which precluded registration.  

The examining attorney, the Appeal Board and the Court of Appeals applied the tests set out in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc. and Milwaukee Electric Tool Corp. v. Freud America, Inc. in determining that the proposed mark was generic. These tests enumerate two steps in this determination. First, consider the genus of goods or services at issue. Second, consider whether the color sought to be registered is understood by the relevant public as a category or type of trade dress for that genus of goods or services. Put another way, courts will determine whether a color mark is generic by identifying the proper group of goods and services and then determining whether consumers associate that color with the group rather than the unique source of the goods.  

In In re: PT Medisafe Technologies, both steps of this test weighed against the applicant. Where the applicant argued that the relevant genus should only be gloves sold to authorized resellers, the Court agreed with the Appeal Board that the proper group was all chloroprene medical gloves, not just those sold as the applicant alleged. Second, the Appeal Board found, and the Court agreed, that there was substantial evidence that the claimed color was widely utilized in the industry and so could not be used to identify a single source. Accordingly, the color was found to be generic. The Court did, however, note that a color could be a source indicator in some circumstances, but not in this case.  

The In re: PT Medisafe Technologies decision underscores the potential difficulties and challenges in obtaining a color mark from the USPTO. The benefits associated with the registration of such an expansive mark, however, can be significant. The services of a skilled trademark attorney can help advise you of the benefits and risks of a trademark application and assist you with the process. 

If you have any questions about the In re: PT Medisafe Technologies case, patent protections or other intellectual property matters, please contact James Lovett at james.lovett@fmglaw.com, practicing in FMG’s Intellectual Property Law Practice Team.   

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