In Forney Industries, Inc. v. Daco of Missouri, Inc., D.C. No. 1:14:-cv-01326 (10th Cir. 2016)(Available Here), the Court affirmed the district court and found Foreny Industries, Inc.’s (herein “Forney”) use of color , which was not associated with any particular shape, pattern or design, was not adequately defined to be inherently distinctive. Forney failed to produce sufficient evidence that its use of color in its line of products had acquired secondary meaning.
Since 1989 Forney had used some combination of red, yellow, black and white coloration on packaging. Specifically, Forney used red and yellow as the dominate background colors with red beginning at the bottom then yellow near the top. Black is used as a banner or for lettering. White is also be used for lettering. Forney alleged that Daco of Missouri, Inc. d/b/a KDAR Co. (herein “KDAR”) infringed on its protected mark by packaging KDAR’s “Hot Max” products with similar colors and a flame motif.
To establish a claim under § 43(a) for an unregistered mark, the plaintiff must prove: (1) “[the] identifying mark . . . is inherently distinctive or . . . has acquired distinctiveness through secondary meaning,” (2) the mark is nonfunctional, and (3) the competitor’s alleged violation of the plaintiff’s rights in its mark is likely to cause consumer confusion. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
The Court found that in light of the Supreme Court’s directive that a product’s color cannot be inherently distinctive and its concern that inherent distinctiveness not be the subject of
excessive litigation, it held that the use of color in product packaging can be inherently distinctive (so that it is unnecessary to show secondary meaning) only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design. Relying on past cases, the Court found that when courts have considered a color scheme in isolation, the analysis turns on whether the plaintiff had proved secondary meaning.
The Court found that Forney’s description was too vague to satisfy the requirement that the color scheme be used in combination with a well-defined shape, pattern or other distinctive design, primarily because Forney’s packaging had changed over the years. Forney had used the color combination in such diverse ways that there is no consistent shape, pattern or design could be discerned from its description of its mark. Therefore, Forney had failed to establish inherent distinctive trade dress.
Forney failed to establish secondary meaning because (1) the advertising did not mention the color mark or emphasize it, (2) there was no indication how sales related to the color mark, and (3) the packaging changed significantly over the years such that there was no continuous, long-term use of the mark.