Color Scheme Was Nonfunctional, Protectable as Trade Dress

by Thomas Long, Legal Editor, CCH Trademark Law Guide

A manufacturer and seller of jewelry injection waxes was entitled to trade dress protection under the Lanham Act for its color coding scheme, the U.S. Court of Appeals in Cincinnati has held in a not-for-publication decision. The manufacturer could proceed with trade dress infringement claims against a competitor that allegedly used the exact same set of colors.

Functionality

The asserted trade dress consisted of a set of eight colors, each associated with a jewelry injection wax having specific properties. There was evidence that the wax colors were nonfunctional, the court said.

Although there was testimony that the lightness or darkness of a wax affected its "readability" (the ability to detect imperfections in wax molding), there was no evidence that any specific color or set of colors provided any utilitarian advantage. Even if any particular color provided a functional advantage, the manufacturer claimed trade dress rights only in its overall color scheme, the court noted. Nothing in the record indicated that the competitor would be placed at an unfair disadvantage if it were forced to adopt a different color coding scheme.

Product Names --Distinctiveness

In addition, the manufacturer could proceed with claims that the competitor infringed its trademark rights in the names associated with its eight waxes. The names --such as "NYC Pink Flakes," "Tuffy Green Flakes," and "Flex-Plast Flakes" --were arbitrary or fanciful and, thus, inherently distinctive, in the court's view.

The competitor did not dispute that it had used the names. The competitor's assertion that it was the actual inventor of the names and formulas for the waxes --and that it, therefore, owned the trade dress --was a disputed factual issue that precluded summary judgment.

Product Descriptors --Registrability

The district court abused its discretion by ordering the manufacturer's "Flakes" trademark to be canceled from the Supplemental Register, the appellate court also held. The mark was not generic. The relevant genus was jewelry injection waxes. "Flakes" was not a species of jewelry injection waxes; it was a descriptor of a particular shape of wax, according to the court.

Kerr Corp., 6th Cir., ¶61,400

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