Qualitex Co. v. Jacobson Products Co.

514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 8 Fla. L. Weekly Fed. S 653, 95 Daily Journal DAR 3867, 95 Cal. Daily Op. Serv. 2249, 63 U.S.L.W. 4227, 34 U.S.P.Q. 2d (BNA) 1161, 1995 U.S. LEXIS 2408
CourtSupreme Court of the United States
DecidedMarch 28, 1995
Docket93-1577
StatusPublished
Cited by500 cases

This text of 514 U.S. 159 (Qualitex Co. v. Jacobson Products Co.) is published on Counsel Stack Legal Research, covering Supreme Court of the United States primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 8 Fla. L. Weekly Fed. S 653, 95 Daily Journal DAR 3867, 95 Cal. Daily Op. Serv. 2249, 63 U.S.L.W. 4227, 34 U.S.P.Q. 2d (BNA) 1161, 1995 U.S. LEXIS 2408 (1995).

Opinion

Justice Breyer

delivered the opinion of the Court.

The question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U. S. C. §§ 1051-1127 (1988 ed. and Supp. V), permits the registration of a trademark that con *161 sists, 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.

I

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 (CD Cal. 1991). But, the Court of Appeals for the Ninth Circuit set aside the judgment 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. 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 *162 U. S. 1287 (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.

II

The Lanham Act gives a seller or producer the exclusive right to “register” a trademark, 15 U. S. C. § 1052 (1988 ed. and Supp. V), and to prevent his or her competitors from using that trademark, § 1114(1). Both the language of the Act and the basic underlying principles of trademark law would seem to include color within the universe of things that can qualify as a trademark. The language of the Lanham Act describes that universe in the broadest of terms. It says that trademarks “includ[e] any word, name, symbol, or device, or any combination thereof.” §1127. Since human beings might use as a “symbol” or “device” almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC’s three chimes), and even a particular scent (of plumeria blossoms on sewing thread). See, e. g., Registration No. 696,147 (Apr. 12,1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U. S. P. Q. 2d 1238, 1240 (TTAB 1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color not do the same?

A color is also capable of satisfying the more important part of the statutory definition of a trademark, which requires that a person “us[e]” or “inten[d] to use” the mark

“to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U. S. C. § 1127.

True, a product’s color is unlike “fanciful,” “arbitrary,” or “suggestive” words or designs, which almost automatically *163 tell a customer that they refer to a brand. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, 9-10 (CA2 1976) (Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763, 768 (1992). The imaginary word “Suntost,” or the words “Suntost Marmalade,” on a jar of orange jam immediately would signal a brand or a product “source”; the jam’s orange color does not do so. But, over time, customers may come to treat a particular color on a product or its packaging (say, a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods — i. e., “to indicate” their “source” — much in the way that descriptive words on a product (say, “Trim” on nail clippers or “Car-Freshner” on deodorizer) can come to indicate a product’s origin. See, e. g., J. Wiss & Sons Co. v. W. E. Bassett Co., 59 C. C. P. A. 1269, 1271 (Pat.), 462 F. 2d 567, 569 (1972); Car-Freshner Corp. v. Turtle Wax, Inc., 268 F. Supp. 162,164 (SDNY 1967). In this circumstance, trademark law says that the word (e. g., “Trim”), although not inherently distinctive, has developed “secondary meaning.” See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844, 851, n. 11 (1982) (“[Secondary meaning” is acquired when “in the minds of the public, the primary significance of a product feature ... is to identify the source of the product rather than the product itself”). Again, one might ask, if trademark law permits a descriptive word with secondary meaning to act as a mark, why would it not permit a color, under similar circumstances, to do the same?

We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained “secondary meaning” and therefore identifies and distinguishes a particular brand (and thus indicates its “source”). In principle, trademark law, by preventing others from copying a source-identifying mark, “reduce[s] the customer’s costs of shopping *164 and making purchasing decisions,” 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition §2.01[2], p. 2-3 (3d ed.

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514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248, 8 Fla. L. Weekly Fed. S 653, 95 Daily Journal DAR 3867, 95 Cal. Daily Op. Serv. 2249, 63 U.S.L.W. 4227, 34 U.S.P.Q. 2d (BNA) 1161, 1995 U.S. LEXIS 2408, Counsel Stack Legal Research, https://law.counselstack.com/opinion/qualitex-co-v-jacobson-products-co-scotus-1995.