Packaging trade dress needs specific design, not just color, to be inherently distinctive

Forney Industries, Inc. v. Daco of Missouri, Inc., — F.3d
—-, 2016 WL 4501941 (10th Cir.. Aug. 29, 2016)
Forney makes retail metalworking parts and accessories and
claimed a protected trade dress in the coloration of its packaging, described
a combination and arrangement of
colors defined by a red into yellow background with a black banner/header that
includes white letters. More specifically, the Forney Color Mark includes red
and yellow as the dominate [sic] background colors. Red typically starts at the
bottom of the packaging, continues up the packaging and may form borders. Red
may also be used in accents including but not limited to lettering. Yellow
typically begins higher than the red and continues up the packaging. Yellow may
also provide borders and be used in accents including but not limited to
lettering. A black banner is positioned toward the top of the package label or
backer card. Black may also be used in accents including but not limited to
lettering. White is used in lettering and accents.
Here are five pictures of its packaging over the years,
reproduced below with Forney’s caption for each:

Four Forney designs

one more Forney design

Forney alleged infringement by Daco, as shown here:

Allegedly infringing packages side by side with Forney
The court of appeals affirmed, holding that “Forney’s use of
color, which was not associated with any particular shape, pattern, or design,
was not adequately defined to be inherently distinctive,” and Forney failed to
show secondary meaning.
The court noted that courts have generally struggled to find
a test for inherent distinctiveness of non-word marks, given that Abercrombie doesn’t translate very
well.  “[I]t may be useful to supplement
that test with the test first introduced in Seabrook Foods, Inc. v. Bar–Well
Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977)”: (1) “whether it was a
‘common’ basic shape or design,” (2) “whether it was unique or unusual in a
particular field,” and (3) “whether it was a mere refinement of a
commonly-adopted and well-known form of ornamentation for a particular class of
goods viewed by the public as a dress or ornamentation for the goods.”  But the Supreme Court has never adopted a
test; Taco Cabana explicitly noted
that the question of whether the restaurant trade dress there was inherently
distinctive was not before the Court. 
We do know that color alone and product design can’t ever be
inherently distinctive, and Wal-Mart’s
other statements about avoiding strike suits and preserving competition are
instructive about “the need for clear rules about what can be inherently
distinctive.”  Seabrook, the Court specifically noted, “would rarely provide the
basis for summary disposition of an anticompetitive strike suit.”  The Court also pointed to the availability of
copyright and design patent as a reason not to worry too much about protecting
design, and told lower courts to err on the side of classifying ambiguities as
product design, thus requiring secondary meaning.
Based on these considerations, the court of appeals here
ruled that “the use of color in product packaging can be inherently distinctive
(so that it is unnecessary to show secondary meaning) only if specific colors
are used in combination with a well-defined shape, pattern, or other
distinctive design.”  This rule is
consistent with the case law; cases involving a color scheme or palette “in
isolation” have turned on secondary meaning. E.g., Board of Supervisors for Louisiana State University
Agricultural and Mechanical. College. v. Smack Apparel Co., 550 F.3d 465 (5th
Cir. 2008).  McCarthy agrees: “whether
color is confined to a defined design can determine whether inherent
distinctiveness is a possible alternative to proving secondary meaning.”
Here, Forney was out of luck.  It didn’t sufficiently articulate the
protectable elements of its claimed mark. 
This is especially important for product lines where the features aren’t
identical across products.  A “vaguely
defined” trade dress shouldn’t be protected. 
Such a trade dress would complicate litigation; “courts will be unable
to evaluate how unique and unexpected the design elements are in the relevant
market.” Moreover, if descriptions are vague, “jurors viewing the same line of
products may conceive the trade dress in terms of different elements and
features, so that the verdict may be based on inconsistent findings.” Nor would
courts be able to shape narrowly-tailored relief without a clear
definition.  Perhaps most important, if
courts can’t identify infringing designs, competitors certainly wouldn’t be
able to know what might draw a lawsuit.
Regardless, Forney’s description did not comport with the
court’s requirement that the color scheme be used in combination with a
well-defined shape, pattern, or other distinctive design. Forney used words
like “typically” and “may” in its description, and that wasn’t due to lack of
proper drafting by counsel. “It is probably the best that one could do, given
the variety of packaging that Forney has used on its products over the years.”  Without a consistent shape, pattern, or
design, “[p]articularly in light of the Supreme Court’s instruction to be
cautious about applying vague, litigation-friendly tests for inherent
distinctiveness, we conclude that Forney has failed to establish an inherently
distinctive trade dress.”
Forney also didn’t have sufficient evidence of secondary
meaning.  Its extensive promotional and
advertising efforts weren’t probative because “advertising alone is typically
unhelpful to prove secondary meaning when it is not directed at highlighting
the trade dress.” Here the district court found that Forney’s advertising
“utterly fails to mention the Color Mark, or to emphasize it in any fashion.”  Sales data were similarly unhelpful.  Testimony about exclusive use for twenty
years also wasn’t enough to survive summary judgment, even though extensive exclusive
use could support a finding of secondary meaning.  First, the testimony was conclusory, and didn’t
even claim uniqueness, just that Forney’s products using the claimed mark “were
uncontested, extensive and exclusive for 20 years.” Forney also submitted pictures
of four packages from its “primary” competitors that use different colors.  But defendants submitted several pictures showing
product packages in the retail-metalworking sector that bear a close
resemblance to Forney’s product packaging.
More importantly, there wasn’t continuous exclusive use of a
definable trade dress. Forney’s packaging changed significantly over 20 years. “How
then is a consumer supposed to have come to associate the packaging with Forney?”

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