QUALITEX CO. v. JACOBSON PRODUCTS CO., INC.
Legal provision: 15 U.S.C. 1051
ORAL ARGUMENT OF DONALD G. MULACK ON BEHALF OF THE PETITIONER
Chief Justice Rehnquist: We'll hear argument next in Number 93-1577, Qualitex Company v. Jacobson Products Company, Inc.--
Mr. Mulack: Mr. Chief Justice and may it please the Court:
We'd like to emphasize two points in argument this morning.
The first is that the Lanham Act does not facially or otherwise prohibit the registration of color as a trademark.
In fact, it permits any symbol or device which distinguishes goods of one manufacturer from another to function as a trademark.
The second point is that both the Patent & Trademark Office and the district court found as a factual matter that Qualitex established a trademark after 30 years of exclusive use of the green-gold color.
Unidentified Justice: Mr. Mulack... Mr. Mulack, the Lanham Act defines trademark to include any word name, symbol, or device, or any combination.
Where do you think color fits into that definition?
Mr. Mulack: Color is a symbol.
It is a symbol that has been used universally.
Indeed, it's a symbol, in the sense that people recognize it and have recognized different colors over the years as representing--
Unidentified Justice: What are the requirements, then, to get a trademark, in your view?
It has to be... color has to be nonfunctional?
Mr. Mulack: --That is correct.
You must show secondary meaning, that--
Unidentified Justice: And you have to show secondary meaning?
Mr. Mulack: --That is correct.
Unidentified Justice: What are the requirements to have protectable trade dress?
Mr. Mulack: With respect to a trade dress claim--
Unidentified Justice: Is it the same as to get a trademark, exactly the same?
Mr. Mulack: --In essence it's very close, as you must also prove secondary meaning, as we did in the--
Unidentified Justice: And it has to be nonfunctional.
Mr. Mulack: --Nonfunctional.
Unidentified Justice: So what's the difference in trade dress and the ability to get it registered for a trademark?
Mr. Mulack: Well, a trade... a trade dress comprises the overall appearance of a product.
It consists of many different items, some of which may or may not be protectable.
For instance, a trade dress is size, shape, color, the overall look of the product.
Any one of those may not be protectable.
However, a trademark is a symbol which is placed--
Unidentified Justice: Well, in these circumstances, with the ironing pad here, is there any difference in what must be established to have protectable trade dress and to get a registered trademark?
In each instance, do they not have to be... the color has to be nonfunctional, and there has to be secondary meaning?
Mr. Mulack: --That is correct.
In both instances--
Unidentified Justice: It has to be the same.
Mr. Mulack: --It must be the same.
Unidentified Justice: And yet the Ninth Circuit appeared to allow trade dress here but said it couldn't be registered as a trademark.
They kind of split the baby, didn't they?
Mr. Mulack: Yes, and that is quite baffling and quite astounding in the sense that the Lanham Act does not prohibit the registration of color.
Unidentified Justice: I thought that in the Two Pesos case we said that a trade dress could be so inherently distinctive that no secondary meaning was required.
Mr. Mulack: That is correct.
Unidentified Justice: But I thought you had just... I thought you had just answered Justice O'Connor, and these are background questions, I suppose, that a secondary meaning is required?
Mr. Mulack: Well, that's correct.
Unidentified Justice: And--
Mr. Mulack: In the case, though, that you... if you have an inherently distinctive product you do not have... in terms of a distinctive trademark you do not have to prove secondary meaning, but the point is that globally I was responding to Justice O'Connor's question about the very basic questions of proving that there is a designation of a source, that one source is particularly recognized... is the manufacturer of the product.
Unidentified Justice: --Well, let me just make sure that I understand it.
For a trade dress, per our decision in Two Pesos, there can be a trade dress that is so distinctive that no secondary meaning is required?
Mr. Mulack: Correct.
Unidentified Justice: Can the same thing happen with color?
Mr. Mulack: Well, I would have to say it's a facts-and-circumstance test, Your Honor.
One would have to prove that this color is, indeed, acting as an indicia of source, and if it doesn't so prove through the facts and circumstances of the evidence, then it would act as a trade--
Unidentified Justice: So then color can be so distinctive you can at least imagine a case in which no secondary meaning is required?
Mr. Mulack: --Well, Your Honor, that's kind of close.
In our particular case, as you know, we have a green-gold color, and that is... it is very distinctive.
Unidentified Justice: I understand that, but as part of these initial questions, I thought you said to Justice O'Connor that for all purposes of this case, and for our consideration, trade dress and color as a trademark are the same, and you also said that a secondary meaning is always required, but that is not what we said in Two Pesos, so I'm still confused.
Mr. Mulack: --Well, I'm sorry if I wasn't clear in my answers.
Clearly, inherently distinctive goods do not require secondary meaning.
I happen to think that trademarks do not require a secondary meaning.
I answered more globally.
But yes, you're absolutely correct, Justice--
Unidentified Justice: Yes, but when you're dealing with pure color, let me ask you this, isn't color part of the public domain in a way that distinctive logos and words are not?
Is it possible that for pure color to be protectable either as trade dress or for a registered mark, that there has to have been secondary meaning acquired?
Mr. Mulack: --Well, we're--
Unidentified Justice: Is that possible because of the difference?
Mr. Mulack: --Well, because of the difference, color in our particular case must have acquired secondary meaning through a long use, so it recognizes and dis--
Unidentified Justice: What does that mean in your particular case?
I mean, the question is... I still don't understand what your posi... I had understood from your brief, I certainly understand from the Government's brief, that the proposition of law you are urging upon us is that color can be protectable as a trademark only if it has acquired a secondary meaning.
Now, I gather you no longer say that, and you disagree with the Government, and you think color can be protectable even if it has not acquired a secondary meaning.
Mr. Mulack: --If color has acquired secondary meaning, then it can be... and if the color itself is--
Unidentified Justice: That's not the question.
The question is, if it has not acquired a secondary meaning, can it be protected as a trademark?
Mr. Mulack: --If it is not inherently distinctive, no, it cannot.
Unidentified Justice: Perhaps there's--
--a middle step there that--
--No, don't put the "if".
I mean, you think in some situations, however, it can be protected as a trademark even if it has acquired no secondary meaning.
Is that your position?
Mr. Mulack: I am... I would say only if it is inherently distinctive, and that is a facts-and-circumstance--
Unidentified Justice: But that could exist, so there are some situations where color can be protected as a trademark without having acquired a secondary meaning.
That's your position.
Mr. Mulack: --I would say if... as the hypothetical that if it was inherently distinctive, as was earlier--
Unidentified Justice: But how can... you didn't ever answer my question.
How can pure color be inherently distinctive?
It's part of the public domain.
Color is color.
How can it be?
Mr. Mulack: --There are numerous colors and shades that have... we have shown in the trial court the human eye recognizes tens of thousands of shades and hues, and as a result--
Unidentified Justice: Mr. Mulack, may I just clarify one thing?
You're not suggesting that you could trademark a color for any and all purposes, you're talking about trademarking a color for use with a press pad, so it's color on a particular item, not color in general.
Mr. Mulack: --We are not... that's correct, Justice Ginsburg, we are not attempting to appropriate color generally across the board to apply to every product that's manufactured in this country.
We are seeking, and we did obtain a registration from the Patent & Trademark Office for this green-gold color as applied in a limited area, to press pads only.
Unidentified Justice: So isn't that... it's almost in the nature of things that you have to establish a secondary meaning.
This color on this product is identified as coming from this source.
Mr. Mulack: That's exactly, right, and we did do that in the trial court.
Unidentified Justice: No, but aren't you also saying, or aren't you at least implying, that with a sufficiently unusual color, combined with an ironing board pad, it may not be necessary to establish secondary meaning by usage?
Aren't you impliedly saying there's a difference between... if I walk into the registration office, there's a difference between trying to register the sort of bland, neutral color of some undyed ironing board pad as distinct from registering the unusual color that you've got, and if the unusual color that you've got applied to an ironing board pad is sufficiently distinctive, you don't have to acquire secondary meaning in order to register it?
Is that what you were implying before?
Mr. Mulack: Well, Your Honor, I suppose if we would extend it to that point, yes, but we have not addressed it in that particular manner in our briefs to say that it is inherently distinctive per se.
We have established--
Unidentified Justice: But you do take the position that there can be combinations of color and product that may be registered without acquiring a secondary meaning first?
Mr. Mulack: --Well, now, Your Honor, combinations of color or product, that's entirely different than a sole--
Unidentified Justice: Well, I thought that's... I thought your answer to Justice Ginsburg was that that's what we were talking about.
Mr. Mulack: --I didn't believe we were talking about combinations of colors.
These are words of art.
Unidentified Justice: What you said is that you can't trademark a color.
Green-gold can't belong to Qualitex for all purposes.
It can belong to it, if your position is right, on these press pads.
Mr. Mulack: That's correct.
Unidentified Justice: And right from the start you can walk into the register and say... you know, register... we haven't sold any trade pads at all yet, but we're thinking of selling trade pads, and we want this weird color to be our trademark--
Mr. Mulack: We have not--
Unidentified Justice: --and the registrar says, you want it, you got it.
Mr. Mulack: --We have not suggested--
Unidentified Justice: No secondary meaning at all.
Mr. Mulack: --Your Honor, we have not suggested that.
Unidentified Justice: I know you haven't suggested it, but we're asking you, is it possible?
If you wanted it, could you get it?
Mr. Mulack: That's a very unique question in the sense that if it--
Unidentified Justice: It's not unique, it's been asked about 20 times from up here and--
--We've gotten about five different answers.
--and we still don't have an answer.
Mr. Mulack: --If it is inherently distinctive in color, which we, of course, would argue that the Qualitex color is distinctive... we're not arguing it's inherently distinctive.
We established our trial court record by proving after 30 years of use that people have recognized it as a sole source.
We're not taking it that far as to say, this color is inherently distinctive.
Unidentified Justice: You don't want us to reach that issue?
Mr. Mulack: That's correct.
We've not asked that point.
Unidentified Justice: So if I happen to like lime yellow, for example, which I think is a beautiful color, you all could go around and get monopolies of it, and henceforth products wouldn't have lime yellow on them because you and other people would have tied them all up with trademarks?
At least they wouldn't have lime yellow on them if... why do you need to take all the lime yellow, anyway?
I mean, if somebody copies your appearance they get a trade dress suit.
Mr. Mulack: Well, the... in the particular industry in question, the press pad industry, many different colors have been used over the course of the years.
No one has ever used this unique green-gold color that Qualitex has used.
Unidentified Justice: Would you explain the protection that you get from having a trademark of this color on this pad that you don't get from trade dress?
Mr. Mulack: Yes.
With respect to a trademark registration, certain rights are conferred by the statute, namely, incontestability of that mark after 5 years.
You have a right to constructive notice that anyone that may use this product throughout the country is put on constructive notice that it's being used and you better not infringe based upon the registration.
Thirdly, there's also an importation clause that allows us to stop at the borders the importation of counterfeit goods just by showing the registration, which is quite important to Qualitex today and other manufacturers because of the importation of knock-off goods, if you will.
So you get those three benefits, in addition to others, that you don't get in a straight trade dress case, and you also... the big benefit is to the public, in the sense that there's a central registry.
There's a registry as to this particular color or this particular trademark being used by a particular manufacturer, and the members of the public then know where to check to see if, indeed, a particular color is being used or has been trademarked.
Unidentified Justice: May I ask you--
--Doesn't trade dress give you enough protection in case somebody copies your appearance?
My real question was the problem of exhausting colors.
There are infinite numbers of beautiful designs.
I take it there are a finite number of attractive colors, and so what is the reason why it's important to industry to be able to tie up with a trademark one of what I would think would be a fairly limited number of attractive colors?
Why doesn't using a symbol, or the trade dress protection, give adequate protection for any legitimate purpose that industry might have?
Mr. Mulack: Well, as I mentioned, trademarking a particular color helps confusion in the marketplace.
Consumers know when they see this same color, or this mark, that they're getting the quality goods that they expected to obtain, and it's no monopoly whatsoever in that respect.
Unidentified Justice: But do they know that if--
Mr. Mulack: --held back in 1918 there's no monopoly to the extent--
Unidentified Justice: --Do they know that if the color appears on an entirely different product, say, a necktie?
I take it you wouldn't claim using this color for a necktie?
Mr. Mulack: --No, Justice Stevens, we have no interest in protecting this particular color against any other product, except on a press pad.
Unidentified Justice: So why is the issue phrased as broadly as it is in the questions presented?
You're not asking for a monopoly on this color.
You're asking for a monopoly on the color used on this particular ironing pad.
Why is that different from a trademark on this color in a triangle, for example?
Mr. Mulack: Well, that... that is a... that is a symbol attached to a color which may create a trademark.
It's different because our whole pad is in this one color--
Unidentified Justice: But it's--
Mr. Mulack: --and the public recognizes this color.
Unidentified Justice: --Which is always in a particular shape, is it not?
It's kind of a long, narrow--
Mr. Mulack: Yes.
Unidentified Justice: --But why us that different than if you just trademarked a triangle of this color?
I mean, neither one would preempt the use of the color on other products that don't have the triangle on them.
Mr. Mulack: Well, what Qualitex did 30 years ago, Justice Stevens--
Unidentified Justice: That's 30 years before they applied for the trademark.
Mr. Mulack: --Yes.
Unidentified Justice: I understand that.
Mr. Mulack: --placed on the pad this very arbitrary color so it would identify itself as a single source.
Unidentified Justice: But why is that different from making a triangle with an arbitrary color in it, using that for 100 years on some other product, like a bottle of soft drink, to identify it?
Mr. Mulack: Well, it may or may not be different, but in terms of what is done, what the realities of the marketplace are right now is that we have sold over a million pads with this one color, so when a buyer sees that--
Unidentified Justice: Yes, but you're not claiming a monopoly on the color on other products, or on other shapes, and I don't understand why this case is different than the ordinary trademark case with the triangle.
Mr. Mulack: --Well, this case is no different in terms of the perspective of this Court deciding whether or not color alone is a trademark, that's exactly correct.
Unidentified Justice: But you're not deciding that color alone is a trademark.
You're deciding that color in this particular configuration on this particular product is a trademark.
Mr. Mulack: No, Your Honor, I don't go so far as to talk about configuration.
Configuration may be another separate element tied into trademarks, per se, that are allowed in color right now.
For instance, a configuration of the red cross, that has been trademarked over the years, and that is a configuration, so when Your Honor puts the word "configuration" into this trademark, it totally takes me into a whole different perspective as well as into different trademark law.
We're talking about just color alone applied to a product, and that product is a press pad.
Unidentified Justice: If you win your case, and I go into the publishing business and I publish all of my books with green-gold bindings, do I infringe your trademark?
Mr. Mulack: Absolutely not.
The registration certificate--
Unidentified Justice: Then I don't know why your answer to Justice Stevens isn't different.
I don't understand the different... I don't understand how you can answer me as you did, and Justice Stevens as you did.
Mr. Mulack: --One must go to the very basic trademark registration certificate that says Qualitex was granted a trademark for the green-gold color as applied to press pads.
Beyond that, we have no rights whatsoever.
Unidentified Justice: Then why isn't the press pad like the triangle.
Mr. Mulack: I'm sorry, Your Honor?
Unidentified Justice: Then why isn't the press pad like the triangle on Bass Ale?
Mr. Mulack: The press pad is a whole different concept, because it is a whole product that has a color.
It's not a consumer looking for a small, little symbol or mark as a trademark.
The trademark in this case is the entire application of an arbitrary color that was placed upon the natural white, off-yellow white cloth that comes from the manufacturer.
Unidentified Justice: Well, in any case--
Mr. Mulack: They put this green color on it, and that became the trademark.
Unidentified Justice: --Could you give a general answer to Justice Stevens and to me that you are not trying to get a trademark in color per se, but color as applied to something in particular?
Mr. Mulack: Yes, we are, and when Your Honor says color per se, I take that to mean, so that the record is clear, color alone.
Yes, we are seeking to establish a trademark in color alone as applied only to press pads.
Unidentified Justice: Now--
--In which case, Justice Stevens is correct in suggesting that the question that you present is somewhat too broad.
Mr. Mulack: The question I'm... that we present--
Unidentified Justice: Your question is whether the Lanham Act prohibits the registration of color as a trademark, and based on the colloquy we've had, it seems to me the question should have been whether or not the Lanham Act protects the registration of color as a trademark on the ironing pad that's the subject of this suit.
And, indeed, that's what's before us, is it not?
I assume that the Patent & Trademark Office granted a trademark here for a green-gold press pad, isn't that right?
Isn't that what the trademark office gave you?
Mr. Mulack: --That's exactly right.
Unidentified Justice: And that's what the Ninth Circuit invalidated?
Mr. Mulack: That is correct.
Unidentified Justice: And that's what's before us.
Mr. Mulack: What's before you--
Unidentified Justice: Not green-gold out here as some separate trademark item, but a green-gold press pad, right?
Mr. Mulack: --That is the specific issue with respect to the facts of this case before the Court.
Unidentified Justice: So you stated your question too broadly.
Mr. Mulack: --Well, if the Court please, what we were certified by this Court on, after petition for cert was granted, the issue was directed as to whether or not color is--
Unidentified Justice: Why can't you say yes?
I mean, all you're interested in is having a green-gold press pad trademark upheld.
Mr. Mulack: --That is precisely what we'd like to do, but to reach that issue, the Court has to construe that the Lanham Act allows color as a trademark.
Unidentified Justice: Well, it's a little too simple.
I mean, really, you are arguing that your trademark is green-gold, but you are permitted to use that trademark only for press pads.
Mr. Mulack: That's right, and only because the Patent & Trademark Office allowed us to do it.
Unidentified Justice: Somebody asks you what's your trademark, you say, green-gold.
No, that's not right.
That's not what the registration says, is it?
What does the registration say?
The registration says it can only be used on press pads.
Mr. Mulack: Press pads, that's correct, but to reach that registration, and to have it given to us, the Patent & Trademark Office must have complied with the law, and the law was, under the Lanham Act, whether or not you can trademark a color, whether you can give a registration for color alone, so... so the Ninth Circuit says, while we agree that the Lanham Act does not prohibit the registration of color, they astoundingly decided that they wanted to cancel our trademark registration when the PTO gave it to us based upon that.
Unidentified Justice: Thank you, Mr. Mulack.
Mr. Mulack: Thank you, Your Honor.
Unidentified Justice: Mr. Wallace.
ORAL ARGUMENT OF LAWRENCE G. WALLACE ON BEHALF OF THE UNITED STATES, AS AMICUS CURIAE, SUPPORTING THE PETITIONER
Mr. Wallace: Thank you, Mr. Chief Justice, and may it please the Court:
There is a dual nature to the interest of the United States in this case.
On the one hand, we urge the Court to uphold the interpretation of the Patent & Trademark Office that the overall color of a particular product, not the color in the abstract, but the color of a particular product, or of a container in which the product is marketed, can qualify under the standards of the Lanham Act for registration as a trademark, and this case provides a textbook example of how it can qualify through the establishment of secondary meaning and nonfunctionality, a rather strong showing in this case.
On the other hand, we urge the Court not to undermine the rather exacting standards that the Patent & Trademark Office applies, and that we think are properly applied under ordinary principles of trademark law when it, or a reviewing court is considering whether an applicant has established the right to register a trademark.
In its 1993 second edition Trademark Manual of Examining Procedure, which we have cited and quoted a bit of in our brief, there is a whole section devoted to the question of color as a trademark.
It's four paragraphs long, and I would like to summarize just a few of the high points at section 1202.04(e), which first cautions the examiners that color is usually perceived as an ornamental feature of the goods, which is not something that could be trademarked.
However, color can function as a trademark if it is used in order to identify the source and if it is perceived by the purchasing public as identifying and distinguishing the source of the goods, and the applicant must submit evidence to the examiner that the proposed color mark has become distinctive of the applicant's goods in commerce, and--
Unidentified Justice: Mr. Wallace, can I interrupt you with a question?
Supposing I was a brand-new manufacturer of a product and I wanted to register a very distinctive new design as the trademark before I'd ever sold it, just to anticipate, I want to identify it.
Can that be done?
Mr. Wallace: --Are you speaking of, not--
Unidentified Justice: Not color, just--
Mr. Wallace: --Your question is not restricted to a single color?
You're talking about--
Unidentified Justice: --I'm just talking about a typical trademark with a fancy design--
Mr. Wallace: --If it is shown to be--
Unidentified Justice: --and a couple of animals in it.
Mr. Wallace: --inherently distinctive--
Unidentified Justice: If it's sufficiently distinctive--
Mr. Wallace: --it can qualify.
Unidentified Justice: --it can qualify even though you've never sold the product, for future use?
Mr. Wallace: Under the Lanham Act as it's been amended, that... if you have an intention to sell it--
Unidentified Justice: Right.
Mr. Wallace: --that will suffice, but then you have to introduce it in commerce and use it--
Unidentified Justice: Could you do that with a color?
Could you do that with a color, say I'm... say this product had never been on the market, and they say, we found this very distinctive color, by which we intend to market the product.
Could they do that?
Mr. Wallace: --Our brief said that a color of a product would not ordinarily be registerable as inherently distinctive.
We're not closing our minds to that possibility, but we have not encountered it in administering the trademark law.
Unidentified Justice: So the statute has two different meanings, depending on whether one plans to market the product on the one hand, or has already marketed it on the other?
Mr. Wallace: The statute has the same meaning.
In order for a mark to be registerable without a showing of secondary meaning, it has to be inherently distinctive, but mere coloration of a product, every product has some color, and colors are used in all kinds of contexts.
Mere coloration is not ordinarily inherently distinctive, so that in order to use just the overall color as a trademark, you have to show secondary meaning.
It's the same meaning of the statute.
Unidentified Justice: Why isn't every trade dress therefore trademarkable, or is it?
Mr. Wallace: Well, there may be aspects of it that are trademarkable, but the trade dress--
Unidentified Justice: Why not the entire thing?
Mr. Wallace: --There are similar... there may be instances where the trade dress could be put together as a trademark in its entire thing.
Unidentified Justice: Well, how about--
Mr. Wallace: If you're talking about the packaging of a particular product--
Unidentified Justice: --Right.
Mr. Wallace: --it could happen.
Unidentified Justice: A certain shape, and a certain color, and a certain ribbon on it, that's a trademark.
That becomes a trademark there, just because people get used to seeing it that way.
Mr. Wallace: Well, if you're--
Unidentified Justice: It's just a new meaning of trademark to me.
Mr. Wallace: --Well, it's not a new meaning, if you establish secondary... people don't usually box themselves into not being able to change any aspect of the trade dress in order to have a mark.
The mark is usually something more discreet that is then used over the years in different ways, but there's nothing in the act that requires that if something qualifies as trade dress it cannot qualify as a trademark, or vice versa.
Unidentified Justice: I suppose a smell, under the Government's theory, could also be... could also qualify.
Mr. Wallace: Well, I have not explored the question of fragrances.
Unidentified Justice: Well, you sell these ironing covers, and they always have a lavender smell, you know.
You associate the lavender smell with this company, so you're going to trademark lavender for ironing board covers.
Mr. Wallace: That is a question I have not explored with the Patent & Trademark Office, or--
Unidentified Justice: Mr. Wallace--
Mr. Wallace: --it hasn't come up in the cases.
Unidentified Justice: --you mentioned two interests of the Government.
Is there... does the Government have any interest that relates to its position vis-a-vis other countries?
That is, in the NAFTA section, article 1708, color is specifically mentioned as something that can be the subject of trademark to distinguish goods or services, so does the United States have any interest vis-a-vis its partners in the trading world to have the same definition of what's trademarkable?
Mr. Wallace: Well, it's not that the definition will always be the same.
The treaty recognizes that if the participating country affords trademark protection for color, then it will be recognized by the other signatories, and of course--
Unidentified Justice: But wouldn't it be odd, then, to recognize somebody else's color and say, but at home you couldn't do it?
Mr. Wallace: --Well, the treaty has not amended the laws of the participating countries so that everyone now has an identical trademark law, but it recognizes aspects of the trademark law that will be mutually enforced.
There are many similarities in the trademark laws, and we must remember that protection of color under the trademark laws can often mean something different from what it means in this case.
It can mean the color of a logo, or a combination of colors on the logo.
It doesn't always mean the color of a product, or the overall color of a container.
In any event, what I was hoping to emphasize is that both aspects of our dual interest can be illustrated by contrasting the situation in this case with claims that are suggested to this Court in one or two of the amicus filings that have been made in support of the petitioner in this Court, which seem to us to present much closer cases because they raise concerns that are not involved in this case about whether... concerns that would probably be explored before the... in the administrative or judicial proceedings about whether the color would qualify as a trademark, and I'm not attempting to prejudge those cases and certainly not asking the Court to prejudge those cases.
Unidentified Justice: What I'm trying to work out, the reason I raised this before, was why... what is the difference between a triangle and a color?
A triangle obviously could be used as a trademark, assuming all conditions.
Historically, I take it, many courts have said that colors cannot.
Now, the differences that I was... assumed had been in the briefs, that I wanted your reaction to, was that there are a limited number of, let's say, attractive colors.
They're prevalent everywhere.
So that if you allow in each field one person to get a trademarkable monopoly of color, you might have less attractive products, you might have trade advantages, et cetera.
That's what I wanted a reaction to.
Mr. Wallace: There are specific findings in this case that answer that question, that there are many other attractive colors available for press pads, and there's nothing in the act that precludes this basis for granting... as a per se matter, for granting a trademark.
Even though courts, mostly looking toward pre-Lanham Act law, some courts have adopted that view, it is not based on the statute.
Unidentified Justice: Thank you, Mr. Wallace.
Mr. Strick, we'll hear from you.
ORAL ARGUMENT OF LAURENCE D. STRICK ON BEHALF OF THE RESPONDENT
Mr. Strick: May it please the Court, Mr. Chief Justice:
I'd like to pick up on a comment that Justice Scalia just made, because I think it goes to the essence of the respondent's case.
Under the view asserted by Qualitex in this case, whatever distinctions might have existed in the law between registered trademarks and trade dress, two completely different concepts heretofore, would be eliminated.
The differences would go away.
In Qualitex's view, there is no difference between trade dress, the overall look and image of a product, and a registered trademark, which has generally and historically been limited to devices, symbols, and designs under the Lanham Act.
I don't think... in any way in which you torture the language of the Lanham Act, mere colors used on these press pads, unconfined to a symbol or a design, cannot be designed as a symbol or a design.
It is trade dress, which adequate protection already exists for, and which Qualitex was given in the case at bar, the same protection it would have been entitled to had it had a registered trademark.
No, petitioner would not answer, the 20-or-so times it was asked by the Court.
That is exactly what the petitioner is asserting.
The petitioner is asserting that I can walk into the Patent & Trademark Office with a color that is inherently... not inherently distinctive, that has never been used on a product, that the public has never even seen--
Unidentified Justice: Well, now, wait a minute.
Mr. Strick: --and say, register it.
Unidentified Justice: Wait a minute.
I'm not sure that's what petitioner said.
We tried to pin petitioner down and were unable to do it, but we do have a case here where the findings show there was secondary meaning acquired.
It's not a first-time registration before any production of the press pad.
This is a press pad that has been in use and been sold for a long time with the green-gold color, and where the Patent & Trademark Office, after some time of experience, did issue a trademark, and you say that that is improper?
Mr. Strick: Yes, I do, Justice O'Connor, and I say it for this reason.
Under section 2 of the Lanham Act, the only type of trademark that requires a showing of secondary meaning in order to earn registrability is a descriptive mark, as this Court pointed out in the Two Pesos case.
Now, the fact that Qualitex went ahead in this case and spent an awful lot of money to prove secondary meaning I think is itself a concession that its color is not inherently distinctive, otherwise it would have so asserted, and it didn't in this case.
Unidentified Justice: What do you mean by the term... and you've used it, and your opponent, to say that a color is inherently distinctive?
What precisely does that mean?
Mr. Strick: --It's a difficult question, Mr. Chief Justice.
Unidentified Justice: Well, it's apparently a difficult answer, too.
Mr. Strick: I think that there are certain colors that if you compare, for example, hot neon pink, that color, one might say that there are certain colors that might in fact be inherently distinctive, because--
Unidentified Justice: Well, is it a totally--
Mr. Strick: --just the spectrography of it.
Unidentified Justice: --Is it a totally subjective thing?
Mr. Strick: I think it is a totally subjective thing.
Unidentified Justice: Then how is it usable in deciding whether or not something can be trademarked?
Mr. Strick: It is the essence of one of the difficulties we've pointed out in our brief.
It is precisely because it is so difficult to tell colors apart, and to make fine distinctions between color.
I can't help but resort to props in this case, when I use--
Unidentified Justice: Well, I thought--
Mr. Strick: --Here are three shades of green--
Unidentified Justice: --Yes, but the Solicitor General says you can't have color as inherently distinctive, that only if secondary meaning has been acquired can the trademark issue.
That's the S.G.'s position.
Or at least it used to be.
It was in his brief, I think.
It was in the brief, anyway, and apparently that kind of fits the facts of this case, and why, on the facts of this case, is the trademark invalid, where we are not dealing with inherently distinctive color, we are dealing with something that has acquired secondary meaning and was found to be nonfunctional?
Mr. Strick: --Yes, justice O'Connor, I say that it's not registrable because it's not being used as a trademark as you defined it at the beginning of petitioner's argument.
The use of color in this case is not a symbol, it is not a device, it is not a design.
Justice Thomas, in his concurring opinion in the Two Pesos case--
Unidentified Justice: Well, the petitioner says--
Mr. Strick: --generally recognized--
Unidentified Justice: --The petitioner says color on a press pad is a symbol, in effect.
Mr. Strick: --I simply disagree with that proposition.
Unidentified Justice: The Patent & Trademark Office takes the position that it is.
Mr. Strick: --The Patent & Trademark Office, if you look back to the Owens-Corning case, was sort of... sort of led kicking and screaming into registering trade colors.
They had denied Owens-Corning a trademark in that case.
The case arose from an appeal of the Trademark Trial & Appeals Board.
It's not some--
Unidentified Justice: That's pink fiberglass insulation?
Mr. Strick: --That's the famous Owens-Corning 1-800-PINK color.
Unidentified Justice: Insulation.
Mr. Strick: Yes.
Unidentified Justice: Yes.
Mr. Strick: Behind-the-wall insulation.
Unidentified Justice: But did the... does the office take the position that color is a symbol, or simply that color as applied to a product is registrable under a definition which does not confine itself to symbols or words or what-not, but refers to a mark as including these things?
Mr. Strick: I think that the way they write the precise rule in question sort of begs the question.
Rule 1202.04(e) says the color can function as a trademark if it is used on the goods in the manner of a trademark.
What I am arguing is that mere color unconfined by a symbol or a design is not a trademark.
Unidentified Justice: Yes, but they--
Mr. Strick: It is protectable trade dress.
Unidentified Justice: --Wasn't... isn't it... that may not be a championship definition, but isn't it clear that they were not assuming that there was the little symbol or device involved, so they must have been assuming that it was color as applied to some kind of an object.
Mr. Strick: I don't get that meaning from the regulation, Mr.... Justice--
Unidentified Justice: Why couldn't color be... fit with the definition of a device used to distinguish goods?
The color here is a device, is a means to distinguish these press pads from other press pads.
Mr. Strick: --I am simply asserting as a matter of policy that color of a product itself, while it may be protectable as trade dress under appropriate circumstances, the overall product, color of a product, that which has always been traditionally referred to and regarded as trade dress, is simply not a device within the meaning--
Unidentified Justice: Well, I'm not sure that that's--
--The Patent & Trademark Office now thinks it is.
Mr. Strick: --I understand the Trademark Office--
Unidentified Justice: And wisdom may come late, but--
Mr. Strick: --And it may not be correct wisdom, for the host of reasons we set forth in our brief.
Unidentified Justice: --But everyone agrees, I take it, that color can be part of a registrable device or symbol.
Everyone agrees with that, don't they?
Mr. Strick: Everyone... even I agree with that.
Unidentified Justice: All right.
Why isn't color, in the context of a press pad, something that has all of the impact and the force and the meaning of a symbol, or a device?
Mr. Strick: I simply disagree with that assertion, Justice Kennedy.
What... the law has always distinguished between trade dress and trademarks.
There is tremendous cross-over, and this Court has held numerous times that the same requirements for trademarkability are used to apply to trade dress to determine whether trade dress is protectable.
But again, to pick up on something Justice Scalia mentioned, why couldn't we trademark, for example, smells?
If I come up with an alleged unique chocolate smell for a candy bar and assert that it, too, functions... has all the functionality and all the attributes of a trade--
Unidentified Justice: You were saying that a design or a symbol need not be registrable with reference to its use on a particular product--
Mr. Strick: --I'm--
Unidentified Justice: --or it becomes trade dress--
Mr. Strick: --What I am saying--
Unidentified Justice: --and I don't think that's the law.
Mr. Strick: --Well, what I am saying is that the law has always separated the issue of registrability of a trademark from concepts of trade dress.
It's an issue in my mind between registrability and protectability.
The mere fact that trade dress may be protectable because it has the attributes of a trademark doesn't necessarily mean it ought to be granted registrability, because I think it puts it somewhat in tension with the Two Pesos case.
Unidentified Justice: Is there any other instance in which the registry has, before issuing a trademark, has requested... gone to the trouble of ascertaining whether that mark has already acquired a secondary meaning?
Are there any other areas where the registry does this?
Mr. Strick: --My understanding is that's exactly what happened in this case.
Unidentified Justice: In this case, I know.
Mr. Strick: The trademark office did require further declarations and affidavits regarding secondary meaning.
Unidentified Justice: Is that, as far as you know, unique?
Mr. Strick: As far as I know, it's unique.
I am not aware of every single instance of registration of color in the trademark office or what was filed.
Unidentified Justice: I had always assumed that you can get a trademark ex ante.
The whole purpose of it is to brand the stuff before you've ever sold anything.
Mr. Strick: That's correct.
I think that's why the holding in Two Pesos was that inherently distinctive trade dress is entitled to protection without secondary meaning, because it's the right to identify your goods even if it hasn't yet bestowed secondary meaning that's being protected.
What I'm simply suggesting is that the product feature in this case--
Unidentified Justice: You keep looking back there.
I can't see what--
Mr. Strick: --There's a press pad--
Unidentified Justice: --You're doing something.
Mr. Strick: --We have... we've brought the actual press pad.
Unidentified Justice: Ah, I see.
Mr. Strick: The product feature in this case is something which has traditionally been regarded as trade dress subject to virtually the same protection as a trademark.
The difference is this.
Again referring back to Justice Scalia's question to Mr. Mulack, could they just walk into the office and say, register this, without a showing of secondary meaning, even if the color is not inherently distinctive?
Putting aside whether I concede that certain colors may be inherently distinctive, could they go in and simply say, register this color, without any showing of secondary meaning, when, under the Two Pesos holding, it's only inherently distinctive--
Unidentified Justice: Well, what if--
Mr. Strick: --trade dress that's entitled to proof without secondary meaning.
Unidentified Justice: --What if the effort was to register a small circle of the same color to simply be put on each of the pads and the rest of the pad stay in its natural color?
Mr. Strick: I think that's probably registrable.
It's a device, it's a design, or it's a logo, but that's not what they did in this case.
They sought to register the entire... in other words, there's no difference between the product and its trademark.
Unidentified Justice: I take it the word "device" in this list of things doesn't mean a gimmick, it means... it means like a heraldic device, that is, a symbol or sign.
It's another word for a sign.
Mr. Strick: Some element of design, that's correct, Justice Scalia.
Unidentified Justice: Where has it ever been defined that way by Congress or by the PTO?
Mr. Strick: I don't think it has.
Unidentified Justice: Hasn't it generally been given a very broad meaning, symbol and device?
Mr. Strick: Generally so.
Again, quoting from Justice Thomas' concurring opinion in the Two Pesos case at page 2766 of the Supreme Court Reporter version of the case, trade dress...
"trade dress, which consists not of words or symbols but of a product's packaging or image, seeks at common law to have been thought incapable ever of being inherently--"
Unidentified Justice: That's not the question I'm asking about.
Trade dress... correct me if I'm wrong.
I associate it more with a total packaging, as distinguished from the goods themselves, and I thought that the words "symbol" and "device", as used by Congress in the law, were given a broad meaning, not a narrow meaning, to mean a heraldic device.
I thought that those terms were given a broad meaning.
Am I wrong?
Mr. Strick: No, I don't think you are wrong, Justice Ginsburg.
I'm only suggesting that the word "device", "symbol" or "design" in my view requires some element of design or art to be a symbol or a logo, otherwise it qualifies as trade dress.
Unidentified Justice: So you disagree with the insulation case as well, the pink--
Mr. Strick: --That's correct.
We agree with Judge Bissell's dissent in the Owens-Corning case, not with the majority opinion.
We think that that was an unusual case based on the facts.
It ought to be limited to its facts, because you might recall that Owens-Corning... Owens-Corning was the only manufacturer that put color on its insulation that went behind walls.
No one cared what color it was, but Owens-Corning used--
Unidentified Justice: --They advertised it that way, too, the famous pink panther, right?
Mr. Strick: --And the 1-800-PINK telephone number, and on and on, so the Court in that case said, we don't think in this particular case it's anticompetitive to grant a trademark because no one else is using color.
I'm suggesting that's an unusual situation.
The facts in the case at bar are that every press pad manufacturer uses one color or another.
Unidentified Justice: May I ask you a question that really, I'm wondering how much emphasis we should properly put on the showing of secondary meaning in a case.
As I understand what you're telling us, the statute doesn't require it, but the trademark office does, is that right?
Mr. Strick: That's what it seems to require.
Unidentified Justice: But if that's true and the statute does not require it, would it not follow that if you came in tomorrow with a yellow pad, not even a distinct... you'd be entitled to a trademark?
Mr. Strick: Yes.
That's what that would mean.
Unidentified Justice: That's your position, that if they're right, that you don't really need all the secondary meanings.
Mr. Strick: That's correct.
They just walk in and get a trademark, even if what they're really talking about is trade dress, and even if it's not inherently distinctive trade dress, which would require an affirmative showing of secondary meaning under the Two Pesos case.
Unidentified Justice: Well, so then you're saying that no trademark requires secondary meaning as a condition of registration.
Mr. Strick: Section 2 requires a showing of secondary meaning only with respect to descriptive marks, as the Two Pesos case pointed out, and the reason why they did not graft on to section 43(a) requirement for secondary meaning for inherently distinctive trade dress is because section 2 doesn't require it except for descriptive marks, if it's arbitrary, fanciful, suggestive, et cetera, that section 2 does not require a showing of secondary meaning for registrability, only if it's the weakest form of mark, in essence, a descriptive mark.
The position adopted by petitioner in this case would turn that, I think, on its head, because they would be able... and be at tension with Two Pesos, because they would in essence be able to register that which might not have been protectable as trade dress absent a showing of secondary meaning, and we've pointed out that--
Unidentified Justice: Well, if you say that color can't be inherently distinctive, so that what we have here is something descriptive in the minds of the buyers?
Then under our Two Pesos case, and other authorities as well, there would have to be secondary meaning to make it protectable.
Mr. Strick: --That's correct.
Unidentified Justice: So I think maybe that's the rationale of the Patent & Trademark Office, to say color isn't inherently distinctive, it's part of the public domain, but if it's descriptive as applied to a product, it can be registered provided secondary meaning is established and provided it's nonfunctional, and isn't it true that very few items will be found where color is nonfunctional?
I guess an aesthetic use or purpose of color makes it functional.
Mr. Strick: I think color is generally used for aesthetic purposes, and since the so-called aesthetic functionality test really seems to have lost its way in the law, and it really isn't used... it isn't used in the Ninth Circuit any more, for example... we did show out there was a nonaesthetic function, in essence, for the use of color on press pads, a finding that was not persuasive either to the district court or to the Ninth Circuit.
Unidentified Justice: But color, not a particular color, as distinguished from the boat motor case, where the particular color, black, that color was functional because it made it look smaller, because it was compatible with different boats--
Mr. Strick: Exactly.
Unidentified Justice: --but here it's arbitrary.
Color is functional on a press pad, but not any particular color.
Mr. Strick: True.
Unidentified Justice: There, the color black was functional.
Mr. Strick: That's true.
I... both the district court and the Ninth Circuit held that color, the use of color may be functional, but not the particular shade of color employed in this case.
We argued, because there was substantial evidence, that you can't sell a light press pad.
They get dirty fast, they look untidy... that was generally uncontested.
But the point that both courts made, however, was it was this particular... there was no need shown for this particular shade of green, and therefore it was serving a source-identifying feature, not a functional feature of making the pad look neat.
But there... most, I think, examples of the use of color will be found functional.
As some of the courts have pointed out, ice creams tend to be packaged in blue or silver packages because it connotes coldness or iciness.
Vegetable cans are packaged in green, for example, because green connotes vegetables.
Lemonade is made yellow, because it connotes lemons.
I think one of the examples I've always used in this case, not... going back to 1920, to the Court's decision in the Coca-Cola versus Koke, K-o-k-e Koke, if you were to take a glass of Pepsi and a glass of Coke, a can of Pepsi and a can of Coke, say Coca-Cola, probably the most famous logo every invented, and a can of Pepsi, which basically is also a very well-known logo after all these years, no one would confuse them, because the logos are so well-known, so well done.
Now, if I took that beverage and poured them both into clear glass, I would hold up two glasses of brown-flavored liquid that you couldn't tell apart.
Now, this Court held in the Coca-Cola case that you couldn't get trademark rights in the brown color of that fluid because this Court held that coloring matter is free to all, and it's an example, I think, that goes to the--
Unidentified Justice: Well, but wasn't part of the reason that that, as a functional matter that was necessary for the manufacture of the product?
A different case, something which we might all need after the arguments, are Pepto-Bismol--
--which is pink.
Mr. Strick: --And it's packaged in a clear bottle, so what you're seeing is really the product, not some image or design pressed onto the bottle.
If you empty a bottle of Pepto-Bismol it's a clear bottle.
That's another example.
They would be arguing, and it's one of the more difficult, I think, examples, because pink is a much more distinctive color than... than green.
Unidentified Justice: Well, but pink medication you associate with being soothing, so I assume that that's functional.
Mr. Strick: But... that may be true.
It's a soothing color, it's--
Unidentified Justice: Sure.
Also, it has kind of a candy connotation, so it's not really medicine, but that's a question I think that goes to the private... private, so-called private label manufacturers question, where this Court... courts are now holding that you can mimic packaging.
The issue is likelihood of confusion, not whether you're mimicking packaging.
If you're putting a sufficient descriptive label... this is Ralph's Market stuff, not Procter Gamble stuff... you're not infringing trademark rights, because the essence of trademark law is to prevent deception and confusion, not simply to protect property rights, but if you adopt Qualitex's position in this case, you are saying that all trade dress is now registrable.
Two Pesos can now take their trade dress one further and register a distinctive Mexican-looking motif for fast food, Mexican--
--I thought Mr. Wallace said no, you were buying into all this stuff that's in the manual, too, so that the trademark office had to be very careful about what colors on products it accepts for registration.
Mr. Strick: --And whether the color is truly being used, as I quoted from the regulation, in a trademark sense of the word.
We've also pointed out the practical problems that registering colors will present.
For example, the trademark office used the same lining codes for pink and red, so if I'm going to search the principal register to see if a client of mine's color is going to infringe a registered color, and I see a lining for red, I don't know what shade that is.
How do I know whether my client's color is going to infringe that color when it doesn't give me sufficient notice of what color we're talking about?
Second, how close do the colors have to be before they're found to be infringing?
I couldn't help notice at counsel table I've got a handful of amicus briefs in light green, I've got another shade of green here... these are pretty clearly different, but the pen blotter that counsel are provided at table is pretty close to this green, and as you get into those kinds of issues, I think you're dealing in an area where both the trademark office and perhaps even the law is not really prepared to exist.
Unidentified Justice: Your argument interests me that you would not know if you saw that a color was registered whether you were a possible infringer.
Is that unique to the color problem?
Don't you have to really examine the exact replication of each symbol or device before you can give an opinion as to whether or not it infringes?
You're not saying that every symbol must have a verbal description that is sufficient in and of itself to determine infringement, are you?
Mr. Strick: No, I'm not, Justice Kennedy.
What I'm saying is, you've got a traditional situation where I'm going to search the principal register and compare my client's proposed mark with a registered mark, I'm going to see words, I'm going to see a symbol or a design, and that symbol or design may or may not have lining codes which the trademark office uses to connote different colors.
Now, I can look at the symbol or the words and say, whoops, my client's mark is going to infringe that, irrespective of the color, or irrespective of whether we've changed the color.
What I'm saying is, when you have a registration that says green-gold for press pads, I don't know what the registration is talking about, and the lining codes may not help because it doesn't tell me what shade of green, what shade of red, what shade of blue.
Unidentified Justice: Well, before you yield some opinions as to some devices, I assume you would have to identify the precise color on the registered device by looking at the mark itself, not just some verbal description of it.
Mr. Strick: That's correct.
In this case it would force me to go out and buy a press pad, because that's the mark.
There's not a symbol.
It's not a design.
It's not a device.
I would have to go out and buy a press pad and then say, okay, this color does or does not... my appliance color does or does not infringe, and I think that's the essence of what I'm saying, and I think it's the essence of the question that Justice Scalia posed: why doesn't trade dress, then, therefore become registrable?
Under the view adopted by Qualitex, there's going to be no difference between trademarks as I've traditionally understood it in 18 years of practice and trade dress, which encompasses a whole host of features separate and apart from the logo, symbol, device, or design a manufacturer may use to differentiate his goods from the goods of a competitor, and I think that opens a host of problems that are unnecessary, particularly when color is already protectable either as part of a logo or as trade dress under section 43(a) of the Lanham Act.
Unidentified Justice: I'm trying to think of what authority the register has to insist that before he approve a particular trademark it have acquired recognition as the symbol of a particular--
Mr. Strick: Well, if you say... if I ask, what is the trademark in this case, I'm going to say green-gold.
I think that's inherently descriptive, almost per se.
Therefore, I suppose the trademark office could say, because just in--
Unidentified Justice: --I think--
Mr. Strick: --the color is descriptive we're going to--
Unidentified Justice: --I think... yes, I think the trademark office probably says it doesn't become distinctive until it has acquired distinctiveness from the public associating it with the particular product, but that's a strange, strange meaning of distinctive, it seems to me.
Mr. Strick: --I agree.
Unidentified Justice: But if you take that... if you construe their work that way, then you would not be able to get a trademark on your yellow pad that we discussed earlier without proving secondary meaning.
Mr. Strick: That's correct.
That is exactly our position.
Unidentified Justice: It seems to me it either is or isn't distinctive.
It doesn't acquire distinctiveness.
It acquires recognition, perhaps.
Mr. Strick: I--
Unidentified Justice: It's either distinctive or not distinctive.
Mr. Strick: --Again, I think in Two Pesos the Court said the issue is not public recognition of the distinctiveness.
It's either inherently distinctive, or it's not.
If it's inherently distinctive, it's entitled to be protected irrespective of whether that inherent distinction has bestowed some other benefit.
It adopted the Fifth Circuit's position in that case.
If there are no--
Unidentified Justice: Do you agree with the view that this color is descriptive?
Mr. Strick: --I agree with the view that the color... I think that any color mark is inherently descriptive, because you have to describe it to describe it.
What is it?
Unidentified Justice: But the word "descriptive" means descriptive of the product, doesn't it, not descriptive of the color?
Mr. Strick: I suppose you could... yes.
Unidentified Justice: And you agree that this is descriptive of the product?
Mr. Strick: --I think it's a descriptive use of the product, but it's not the same as a can of meat--
Unidentified Justice: Well, don't you say the color--
Mr. Strick: --that says, "good meat".
Unidentified Justice: --Don't you say the color is descriptive, not that this particular color is descriptive of this product?
Mr. Strick: Color is descriptive.
Unidentified Justice: Yes.
Mr. Strick: That's what I'm saying, but I'm also saying it's not the same as a can of chili that does says, "Good-eating chili", or something like that, which would clearly be a descriptive... a descriptive mark.
Unidentified Justice: I'm not sure I understand what you mean when you say color is descriptive.
What do you mean by, color is descriptive?
Mr. Strick: It's not something I planned to get into on the argument, but if you were to ask me, what is the trademark whose protection is sought in this case, I'm going to say the color, a green-gold color.
That sounds like I'm describing the mark.
Unidentified Justice: Not any mark.
I mean, you can describe a red cross mark as a, you know--
--The red cross--
Mr. Strick: The red cross would be a red cross colored red.
That's a slightly different example.
I am not asserting, by the way, in this case, and I did not in my brief, that registration should be denied in this case because it's purely descriptive, so I don't want any misunderstanding on that.
I did not assert it in the brief, and I am not asserting it, except as part of this--
Unidentified Justice: --I withdraw my question, then.
You have enough problems, without asking.
Mr. Strick: --If there are no more questions, I've pretty much had my argument.
Chief Justice Rehnquist: Thank you, Mr. Strick.
The case is submitted.
Argument of Speaker
Mr. Speaker: The opinion of the court order number 93-1577, Qualitex Company against Jacobson Products will e announced by Justice Breyer.
Argument of Justice Breyer
Mr. Breyer: In this case, Qualitex is a company that makes press pads for dry cleaning services and they color them special green gold and people began to associate the green gold with the Qualitex Company and they trademarked that color.
Somebody else began to imitate the pads, the defendant, and then Qualitex sued them for trademarking infringement.
The Ninth Circuit held that a color, pure and simple cannot be a trademark and that was the issue that we had to decide.
We decided that a color, pure and simple can sometimes be a trademark.
Our reason basically as we look at the statute, it spells that trademark can include any word, name, symbol or device and that seems to me almost anything.
Also, it’s true that in the past, shapes and sounds like the NBC chimes and even a smell has sometimes been a trademark.
It fits within the rest of the definition that is, it can pick out and distinguish a product and put in people’s mind the fact that product is associated with the particular company and so it can serve the purpose of trademark law and also at some point, sometimes a color wouldn’t necessarily serve our function because if it serves a function other than just identifying the company, it can’t be a trademark.
So, it seems to qualify.
Now, the Ninth Circuit thought there was special reason to involving colors, would prevention from being trademarks such as that’ll be hard to distinguish one from the other, but lots of things are hard to distinguish one from the other.
They thought there are limited supply of colors, but actually there are many and the doctrine of functionality makes certain that colors can still be used to make things beautiful or serve other functions and trademark, well, won’t tie them up and we look into the history of the statute and thought in historical terms to, it’s meant to apply to colors and for that reason we reverse the Ninth Circuit and our opinion is unanimous.