Qualitex Co.

v.
Jacobson Products
Co., Inc.
514 U.S. 159 (1995)
Court : Supreme Court of the United States

Coram : Breyer, J.

Holding : 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.
Qualitex’ ‘Sun Glow’ press pad
 Facts of the Case
 Qualitex, an Illinois corporation, manufactures and sells various
products for dry cleaners, laundries and garment
manufacturers. In 1957, Qualitex began manufacturing and
selling its "SUN GLOW" press pad for use on dry cleaning
presses. The trademark "SUN GLOW” was registered with the
United States Patent and Trademark Office in 1959. The fabric
for the cover of the pad is a unique green-gold color.

 The green-gold color had been used in color advertisements

for the pads in the leading trade publications since 1970.
Qualitex prepared its bulletins, trade show flyers, brochures and
mailers with the green-gold color.
 Further, when displaying its wares in trade shows, Qualitex draped
its booth with the green-gold cover material to further identify the
particular color with Qualitex press pads. Overall, from 1960 to
1990, Qualitex expended over $1.6 million for advertising the
green-gold color and promoting it at trade shows.

 Jacobson began manufacturing and marketing a "MAGIC

GLOW" press pad in 1989. The cover was of the same green-gold
color as that of Qualitex’ "SUN GLOW" pads, and the names of
the pads were similar.

 In 1990, Qualitex Company sued Jacobson Products Co., Inc., in

the US District Court for the Central District of California for
trade dress infringement and unfair competition.
 Issues before the Court
 Qualitex initiated this action on March 9, 1990, by filing a complaint
seeking injunctive relief and damages from Jacobson on the grounds that
• Jacobson infringed Qualitex's trade dress in violation of Section 43(a)
of the Lanham Act; and
• Jacobson "passed off" its goods as those of Qualitex, and thus was
guilty of unfair competition in violation of section 43 of the Lanham
Act.

 During the pendency of this action, Qualitex filed for registration of the
green-gold color. Registration was granted by the Patent and Trademark
Office on February 5, 1991, and Qualitex added to its complaint the claim
that Jacobson infringed Qualitex's federally registered trademark, in
violation of Section 32(1) of the Lanham Act.
 Contentions of the Respondent
 If the law permits the use of color as a trademark, it will produce
uncertainty and unresolvable court disputes about what shades of a
color a competitor may lawfully use. Because lighting will affect
perceptions of protected color, competitors and courts will suffer
from "shade confusion" as they try to decide whether use of a similar
color on a similar product does, or does not, confuse customers and
thereby infringe a trademark.

 If one of many competitors can appropriate a particular color for use

as a trademark, and each competitor then tries to do the same, the
supply of colors will soon be depleted to the point where a
competitor's inability to find a suitable color will put that competitor
at a significant disadvantage.
 They also referred to several older cases — including Supreme Court
cases — in support of its position which suggested that the
"product including the coloring matter is free to all who make it,"
Coca-Cola Co. v. Koke Co. of America (1920) and Campbell Soup
Co. v. Armour & Co. (1949).

 Fourth, Jacobson argued that there was no need to permit color

alone to function as a trademark because a firm already may use
color as part of a trademark, say, as a colored circle or colored letter
or colored word, and may rely upon "trade dress" protection, under
§ 43(a) of the Lanham Act, if a competitor copies its color and
thereby causes consumer confusion regarding the overall appearance
of the competing products or their packaging.
 Findings of the Court
 The Court was of the opinion that as a result of Qualitex' long and
exclusive use of the green-gold color in the marketplace, the color had
acquired distinctiveness or "secondary meaning”. There was evidence
that some purchasers had become so familiar with the green-gold color
that they ordered the press pads over the telephone by merely
describing its color.
 The Lanham Act gives a seller or producer the exclusive right to register
a trademark and to prevent his or her competitors from using that
trademark.
 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. Under the Act, trademarks
include any word, name, symbol, or device, or any combination thereof.
 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 shape of a Coca-Cola bottle and
NBC’s three chime sound have been authorized as a trademark)

 Although a product's color is unlike "fanciful," "arbitrary," or

"suggestive" words or designs, which almost automatically tell a
customer that they refer to a brand, but over time, customers may
come to treat a particular color on a product or its packaging 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 do.

 The color having attained a "secondary meaning” helps identify its

‘source’ quickly and easily assures a potential customer that this item
— the item with this mark — is made by the same producer as other
similarly marked items that he or she liked or disliked in the past.
 Trademark law seeks to promote competition by protecting
a firm's reputation, The functionality doctrine of trademark
law prevents it from instead inhibiting legitimate
competition by allowing a producer to control a useful
product feature.
 In general terms, a product feature cannot serve as a
trademark if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article, i.e. if
exclusive use of the feature would put competitors at a
significant disadvantage. [Inwood Laboratories, Inc. v. Ives
Laboratories (1982)]
 There was no competitive need in the industry for the
green-gold color, since other colors were equally usable.
Also, there were several distinctive shades of greens,
yellows, blues, and browns or tans available to the
competitors which did not pose the threat of hindering
competition.
 The U.S. Patent and Trademark Office Manual
approved trademark registration of color alone in cases
where it "has become distinctive of the applicant's
goods in commerce," provided that there is no
competitive need for colors to remain available in the
industry and the color is not ‘functional’.
Requirements for qualification as a trademark
 First, it should act as a symbol. The green-gold color was
found to have met this requirement.
 Secondly, it should be used as a mark. Having developed a
secondary meaning (as customers identified the green-gold
color as belonging to Qualitex), it was indicative of the
brand of the press pads.
 It should help distinguish the seller’s goods from others but
must not serve a particular purpose, green-gold color
has no other function. Although some color was required
to be used on press pads to avoid noticeable stains, there
was no specific need for green-gold to be used, all colors
were equally usable.