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Essentiality is Essential to Color Functionality in Trademark Cases: Ninth Circuit
Practical Law Legal Update 9-603-9327 (Approx. 4 pages)
Essentiality is Essential to Color Functionality in Trademark Cases: Ninth Circuit
by Practical Law Intellectual Property & Technology
| Published on 10 Mar 2015 • USA (National/Federal) |
In an unpublished memorandum opinion, Moldex-Metric, Inc. v. McKeon Products, Inc., the US Court of Appeals for the Ninth Circuit reversed, vacated and remanded the district court's grant of summary judgment in favor of an accused trademark infringer, ruling that the district court erred in not addressing essentiality when analyzing the functionality of the color green for ear plugs.
On March 6, 2015, in Moldex-Metric, Inc. v. McKeon Products, Inc., the US Court of Appeals for the Ninth Circuit vacated, reversed and remanded the US District Court for the Central District of California's grant of summary judgment to the defendant in an action claiming infringement of Moldex-Metric's color mark (No. 13-55446, (Mar. 6, 2014)). In its majority opinion, the Ninth Circuit ruled that the district court erred in failing to address whether the color green is essential to the purpose or use of Moldex-Metric's ear plugs before concluding that this color is functional and therefore not protectable as trade dress or a trademark.
Although not precedential, this case is noteworthy for the Ninth Circuit's attempt to clarify that:
- The controlling test of color functionality is essentiality as formulated by the Supreme Court in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).
- Qualitex's essentiality standard requires that, for a trademark or trade dress's color to be considered functional, the color must:
- be essential to the use or purpose of the article;
- affect the cost or quality of the article; or
- put competitors at a significant non-reputation-related disadvantage if granted exclusive trademark use.
- To the extent that the courts rely on the functionality factors the Ninth Circuit set out in Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998) without incorporating or adding the Qualitex essentiality requirement, the courts' reliance on the Disc Golf factors is misplaced. The nonexclusive Disc Golf factors for assessing the functionality of product features such as colors or designs are:
- whether the design yields a utilitarian advantage;
- whether alternative designs are available;
- whether advertising touts the utilitarian advantages of the design; and
- whether the particular design results from a comparatively simple or inexpensive method of manufacture.
The Ninth Circuit recognized that, while the factors enumerated in the Disc Golf decision can be useful guidelines for determining when color is barred from trademark use based on functionality, these factors are:
- Neither exclusive nor in themselves dispositive.
- Should not be rigidly applied.
- Must reflect the Qualitex decision’s focus on essentiality.
The Ninth Circuit therefore vacated and reversed the order of summary judgment and remanded the case for the district court's assessment of functionality under the Qualitex standard.
In a dissenting opinion, Circuit Court Judge Watford argued that the Qualitex standard was both incorporated in the Disc Golf factors and directly addressed by the district court.
For more information on functionality and color as protectable trade dress, see Practice Note, Trade Dress.