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MAY A PRODUCT’S COLOR QUALIFY IT FOR TRADEMARK REGISTRATION?

SHARE MAY A PRODUCT’S COLOR QUALIFY IT FOR TRADEMARK REGISTRATION?

The Pink Panther's pink is protected. NutraSweet's blue is not protected. On Jan. 9 the Supreme Court will look at a green-gold pad for dry-cleaning presses. May its color alone qualify it for trademark registration?

The case raises a question the court hasn't directly touched since 1906. The current case is Qualitex Co. vs. Jacobson Products Co.Qualitex, a Chicago firm that sells products chiefly to dry cleaners, began marketing a top-quality pad in 1957. The company named it "Sun Glow" and began selling it in a distinctive color known as Brass No. 6587. "Sun Glow" was a great hit.

This success was not lost on the Jacobson company, a competing supplier of dry-cleaning products. In 1989 Jacobson set out to market a less expensive press pad of its own, to be known as "Magic Glow." Lo and behold, the Jacobson pad came in the identical green-gold color. At a glance, the two pads could not be told apart.

Qualitex sought and obtained a trademark registration for Brass No. 6587 as used in dry-cleaning press pads. Then Qualitex sued Jacobson on two counts: that Jacobson had engaged in unfair trade practices and that Jacobson had infringed a valid trademark registration.

In the District Court, Qualitex won on both charges. Jacobson had behaved badly; and a distinctive color, as such, could be trademarked. Then the case went to the 9th Circuit. The 9th upheld the judgment on unfair trade practices but reversed on the question of trademarking a color.

The case law goes back to 1906, when a Missouri company manufacturing wire rope sued a competitor for trademark infringement. The plaintiff company said its rope was distinctive: It colored one strand of wire. Usually the color was red, but the trademark covered any color.

The Supreme Court was uncertain whether "mere color" can ever constitute a valid trademark. If a single color had been used in the rope, perhaps the trademark might be sustained, but a trademark that covered "all the colors of the rainbow" could not be sustained.

Then came the case of the Pink Panther. In 1985 the Federal Circuit held that Owens-Corning Fiberglas Corp. could trademark the pink panther's pink. An overall color, said the court, is akin to an overall surface design, and the law specifically protects "designs."

This reasoning was lost on the 7th Circuit in 1990. The court held that Nutra-Sweet could not trademark its particular pastel blue.

There matters stand. Remarkably, in the Qualitex case at hand, the defendant Jacobson no longer cares whether the green-gold trademark stands or falls. But if color trademarks no longer matter to Jacobson, the issue matters greatly in the business world at large.