Bifalgorithm post · Property · Trademarks and Domain Names

Case Holding

Case Holding (Property · Trademarks and Domain Names) — "Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995) J USTICE B REYER delivered the opinion of t…

Ideas in this flowchart

  • Qualitex Co. v. Jacobson Products Co. concerns whether color alone may function as a trademark under the Lanham Act.
  • Does the Lanham Act permit registration of a trademark consisting purely of a color?
  • A color may satisfy the ordinary legal requirements for trademark protection.
  • No special legal rule categorically prevents color alone from serving as a trademark.
  • Qualitex used a distinctive green-gold color on press pads sold to dry-cleaning firms.
  • Qualitex had used the special green-gold color since the 1950s.
  • Jacobson began selling similar press pads in the same green-gold color in 1989.
  • Qualitex registered the green-gold color as a trademark in 1991.
  • Qualitex added trademark infringement to its existing unfair competition lawsuit.
  • The District Court ruled in Qualitex’s favor.
  • The Ninth Circuit reversed the trademark infringement judgment because it believed color alone could not be registered.
  • Courts of appeals disagreed about whether color alone could receive trademark protection.
  • Some decisions imposed an absolute prohibition, while others allowed or declined to prohibit protection of color alone.
  • The Supreme Court granted certiorari and reversed the Ninth Circuit’s judgment.
Feed/

Case Holding

Channel

Property

1 page

"Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995) J USTICE B REYER delivered the opinion of the Court. The question in this case is whether the Lanham Trademark Act of 1946 (Lanham Act), 15 U.S.C. §§ 1051- 1127 (1988 ed. and Supp. V), permits the registration of a trademark that consists, purely and simply, of a color. We conclude that, sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark. The case before us grows out of petitioner Qualitex Company’s use (since the 1950’s) of a special shade of green-gold color on the pads that it makes and sells to dry cleaning firms for use on dry cleaning presses. In 1989 respondent Jacobson Products (a Qualitex rival) began to sell its own press pads to dry cleaning firms; and it colored those pads a similar green-gold. In 1991 Qualitex registered the special green-gold color on press pads with the Patent and Trademark Office as a trademark. Registration No. 1,633,711 (Feb. 5, 1991). Qualitex subsequently added a trademark infringement count, 15 U.S.C. § 1114(1), to an unfair competition claim, § 1125(a), in a lawsuit it had already filed challenging Jacobson’s use of the green -gold color. Qualitex won the lawsuit in the District Court. 21 U.S.P.Q.2d 1457, 1991 WL 318798 (CD Cal.1991). But, the Court of Appeals for the Ninth Circuit set aside the judg ment in Qualitex’s favor on the trademark infringement claim because, in that Circuit’s view, the Lanham Act does not permit Qualitex, or anyone else, to register “color alone” as a trademark. 13 F.3d 1297, 1300, 1302 (1994). The courts of appeals have differed as to whether or not the law recognizes the use of color alone as a trademark.\n\n340 Compare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (CA7 1990) (absolute prohibition against protection of color alone), with In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1128 (CA Fed.1985) (allowing registration of color pink for fiberglass insulation), and Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993) (declining to establish per se prohibition against protecting color alone as a trademark). Therefore, this Court granted certiorari. 512 U.S. — -, 115 S.Ct. 40, 129 L.Ed.2d 935 (1994). We now hold that there is no rule absolutely barring the use of color alone, and we reverse the judgment of the Ninth Circuit."

Flowchart preview
Series cover
👍
0
0 comments0 shares

Sign in to view and post comments.