Summary
The United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's refusal to register PT Medisafe Technologies' proposed dark green color mark for medical examination gloves as generic. The court adopted the Board's modified two-step test for assessing the genericness of color marks and found substantial evidence supporting the determination that the color is commonly used in the industry and does not function as a source identifier.
Topics
Practice areas
Questions Presented
- Whether the Board applied the correct legal test for determining genericness of a color mark.
- Whether the Board’s finding that the color mark is generic is supported by substantial evidence.
Holdings
- The Board correctly applied the two‑step Milwaukee test, a permissible modification of the H. Marvin Ginn test, and therefore its legal analysis is proper.
- Substantial evidence supports the Board’s determination that the dark‑green color is generic for chloroprene medical examination gloves, and therefore the Board’s decision is affirmed.
Key quotations
“We agree with the Board that the Milwaukee test is appropriate and hereby adopt it.” (at 8)
“Trade dress, including a color mark, that cannot serve as an indicator of source is generic and unprotectable.” (at 11)
Factual background
Medisafe, a manufacturer of chloroprene medical examination gloves, sought registration of a dark‑green color (Pantone 3285 c) applied to the entire surface of its gloves. The examiner found the color not inherently distinctive and later concluded the mark was generic. Medisafe submitted declarations, advertisements, and a consumer survey, which the examiner and the Board found unpersuasive.
Procedural history
The PTO examiner rejected Medisafe’s dark‑green color mark as non‑inherently distinctive and later as generic. Medisafe attempted to prove acquired distinctiveness, but the examiner and the Board affirmed the genericness finding. Medisafe appealed the Board’s decision to the Federal Circuit.