Qualitex Co. v. Jacobson Products Co

“A color alone can serve as a badge of origin — provided it identifies the source and is nonfunctional.”

Short Description

This U.S. Supreme Court decision held that, under the right circumstances, a single color can be registered and protected as a trademark (i.e. a “mark”) under the Lanham Act, if it has acquired secondary meaning and is not functional.

Facts

⦁ Qualitex Co. manufactured press pads for dry-cleaning presses, and for many years used a distinctive green-gold color on those pads.

⦁ Jacobson Products, a competitor, later began selling press pads in a very similar green-gold hue.

⦁ In 1991, Qualitex registered that green-gold color as a trademark with the U.S. Patent and Trademark Office.

⦁ Qualitex brought an action claiming unfair competition and trademark infringement, seeking injunctive relief and damages.

⦁ The District Court ruled in favor of Qualitex.

⦁ The Ninth Circuit reversed the infringement part, holding that color by itself cannot be a valid trademark.

⦁ Qualitex then appealed to the U.S. Supreme Court.

Issues / Findings / Reasoning

⦁ Issue: Can a single color (without any additional design or wording) function as a trademark under the Lanham Act?

⦁ Statutory scope: The Lanham Act’s definition of “trademark” is capacious and includes “any word, name, symbol, or device, or any combination thereof.”

⦁ Distinctiveness / Secondary meaning: A color alone is not inherently distinctive, so to qualify it must have acquired “secondary meaning” — i.e. consumers must come to associate that color with a particular source or producer.

⦁ Functionality doctrine: Trademark protection must not extend to functional features. The Court examined whether the green-gold color was functional (i.e. necessary for use, quality, cost, competition) and found that, in this industry, the color offered no competitive advantage, and alternate colors were equally usable. So it was nonfunctional in this context.

⦁ Rejection of objections: Jacobson’s arguments (such as that allowing color monopolies would lead to depletion of color options, or confusion over shades) were unpersuasive. The Court held existing doctrines (like functionality) and judicial assessment of likelihood of confusion could address those concerns.

⦁ Holding: The Lanham Act does permit the registration of a color alone, under conditions (nonfunctionality and acquired distinctiveness) being satisfied.

Suggestions / Implications (in the doctrine)

⦁ Not every color will qualify — the claimant must show that the color has developed secondary meaning in consumers’ minds as signifying a single source.

⦁ The functionality doctrine remains an important check: if a color is essential to the use or purpose of the product, or affects cost, quality, or competition, it cannot be monopolized as a trademark.

⦁ Courts must carefully delineate the precise hue, shade, and boundaries of what is protected, to avoid stifling fair competition among similar colors.

⦁ The decision opens the door for non-traditional trademarks (beyond words or logos) such as shapes, sounds, colors, etc., but always subject to doctrinal constraints.

Judgment and Date

The U.S. Supreme Court reversed the Ninth Circuit’s decision and held that Qualitex’s registration of its green-gold color as a trademark was valid (so long as conditions are met).

Date of judgment: March 28, 1995.