TTAB: Color Black for Floral Packaging is Aesthetically Functional | Practical Law

TTAB: Color Black for Floral Packaging is Aesthetically Functional | Practical Law

In In re Florists' Transworld Delivery, Inc., the USPTO Trademark Trial and Appeal Board affirmed the trademark examiner's refusal to register the color black as applied to packaging for flowers and floral arrangements because it is aesthetically functional, and alternatively, it lacked acquired distinctiveness.

TTAB: Color Black for Floral Packaging is Aesthetically Functional

Practical Law Legal Update 8-525-5191 (Approx. 3 pages)

TTAB: Color Black for Floral Packaging is Aesthetically Functional

by PLC Intellectual Property & Technology
Published on 02 Apr 2013 • USA (National/Federal)
In In re Florists' Transworld Delivery, Inc., the USPTO Trademark Trial and Appeal Board affirmed the trademark examiner's refusal to register the color black as applied to packaging for flowers and floral arrangements because it is aesthetically functional, and alternatively, it lacked acquired distinctiveness.
In its March 28, 2013 precedential decision in In re Florists' Transworld Delivery, Inc., the USPTO Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal to register a mark consisting of the color black for packaging for flowers. It held that the mark was not entitled to registration because it was aesthetically functional under Section 2(e)(5) of the Lanham Trademark Act, and in the alternative, lacked acquired distinctiveness.
In ruling on aesthetic functionality, the TTAB concluded that competitors would be at a disadvantage if they could not use the color black for packaging because it has particular meaning and significance in the floral industry, including signifying:
  • Elegance and luxury.
  • Somber occasions like funerals.
  • Halloween.
The TTAB's opinion reviewed previous case law on functionality, highlighting the recent Second Circuit decision in Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc. (Louboutin). Citing Louboutin, the TTAB explained that the test for aesthetic functionality has three parts. The court must consider:
  • Utilitarian functionality under the test set out by the Supreme Court in Inwood Labs., Inc. v. Ives Labs., Inc. (Inwood) which consists of two prongs. A feature is functional in a utilitarian sense if:
    • it is essential to the use or purpose of the product at issue; or
    • it affects the cost or quality of the product.
  • Aesthetic functionality under the test set out by the Supreme Court in Qualitex Co. v. Jacobson Prods. Co. If the design feature is functional under Inwood the inquiry ends. If not, it must be shown not to have a significant effect on competition before it can receive trademark protection.
For more information on the Second Circuit's Louboutin decision, see Practice Note, In Dispute: Louboutin v. YSL.
Court Documents