1202.05 Color as a Mark

Color marks are marks that consist solely of one or more colors used on particular objects. For marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995) (green-gold used on dry cleaning press pads held to be a protectible trademark where the color had acquired secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (the color pink as applied to fibrous glass residential insulation registrable where the evidence showed the color had acquired secondary meaning). Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.

The registrability of a color mark depends on the manner in which the proposed mark is used. Owens-Corning, 774 F.2d at 1120, 227 USPQ at 419. A color(s) takes on the characteristics of the object or surface to which it is applied, and the commercial impression of a color will change accordingly. See In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) ("a word mark retains its same appearance when used on different objects, but color is not immediately distinguishable as a service mark when used in similar circumstances").

Color marks are never inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000). See TMEP §1202.05(a) and cases cited therein. However, the Court of Appeals for the Federal Circuit, in In re Forney Industries, Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020), stated a limited exception where a multiple-color mark may be inherently distinctive when used on product packaging, depending on the character of the color design. See also TMEP §1202.02(b)(ii).

Color, whether a single overall color or multiple colors applied in a specific and arbitrary fashion, is usually perceived as an ornamental feature of the goods or services. Owens-Corning, 774 F.2d at 1124, 227 USPQ at 422; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) , aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997) ("blue motif" used in retail stores would likely be perceived by prospective purchasers as "nothing more than interior decoration" that "could be found in any number of retail establishments. Undoubtedly such features are usually perceived as interior decoration or ornamentation."). However, color can function as a mark if it is used in the manner of a trademark or service mark and if it is perceived by the purchasing public to identify and distinguish the goods or services on or in connection with which it is used and to indicate their source. The United States Supreme Court has held that color alone may, sometimes, meet the basic legal requirements for a trademark. When it does, there is no rule that prevents color from serving as a mark. Qualitex, 514 U.S. at 161, 34 USPQ2d at 1162. If a color is not functional and is shown to have acquired distinctiveness on or in connection with the applicant’s goods or services, it is registrable as a mark.

Functional color marks are not registrable. See TMEP §1202.05(b) and cases cited therein.

1202.05(a) Color Marks Never Inherently Distinctive

Color marks normally are not inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); In re Dimarzio, Inc., 2021 USPQ2d 1191, at *6 (TTAB 2021); In re Hodgdon Powder Co., 119 USPQ2d 1254, 1255 (TTAB 2016). Single color marks are never inherently distinctive and can only be registered upon a showing of acquired distinctiveness. Dimarzio, 2021 USPQ2d at *6. A multiple-color mark may be inherently distinctive when used on product packaging, depending on the character of the color design. In re Forney Industries, Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020); see also TMEP §1202.02(b)(ii).

Generally, the examining attorney must refuse to register a color mark on the Principal Register, unless the applicant establishes that the proposed mark has acquired distinctiveness under §2(f). The examining attorney must issue this refusal in color mark applications where acquired distinctiveness has not been shown, regardless of the filing basis of the application. The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.

If the proposed color mark is not functional, it may be registrable on the Principal Register if it is shown to have acquired distinctiveness under §2(f). See In re Hodgdon Powder Co., 119 USPQ2d at 1255-59. If it is not distinctive, it is registrable only on the Supplemental Register. See In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996) ("blue motif" applied to retail store services not registrable on Principal Register without resort to Section 2(f)), aff’d per curiam, 114 F.3d 1207 (Fed. Cir. 1997); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142, 1145 (TTAB 1990) (the color green, as uniformly applied to medical instruments, not barred from registration on the basis of functionality; however, evidence failed to establish the color had become distinctive of the goods); In re Deere & Co., 7 USPQ2d 1401, 1403-04 (TTAB 1988) (the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence established the colors had become distinctive of the goods).

The burden of proving that a color mark has acquired distinctiveness is substantial. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (holding applied-for mark consisting of the color pink, as uniformly applied to fibrous glass residential insulation, had acquired distinctiveness); In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1028 (TTAB 2017) (holding applied-for mark consisting of "the color yellow appearing as the predominant uniform background color on product packaging" for cereal had not acquired distinctiveness); In re Lorillard Licensing Co., 99 USPQ2d 1312 (TTAB 2011) (holding applied-for mark consisting of "any orange text appearing on a green background," for cigarettes had not acquired distinctiveness); In re Benetton Grp. S.p.A., 48 USPQ2d 1214 (TTAB 1998) (holding applied-for mark consisting of a green rectangular background design for clothing and footwear had not acquired distinctiveness); In re Am. Home Prods. Corp., 226 USPQ 327 (TTAB 1985) (holding applied-for mark consisting of tri-colored, three-dimensional, circular-shaped design for analgesic and muscle relaxant tablets had acquired distinctiveness); In re Star Pharms., Inc., 225 USPQ 209 (TTAB 1985) (holding applied-for mark consisting of two-colored drug capsules and multi-colored seeds or granules contained therein for methyltestosterone had acquired distinctiveness). A mere statement of long use is not sufficient. Benetton, 48 USPQ2d at 1216-17 (despite long use, record devoid of any evidence that the green rectangular background design has been used, promoted, or advertised as a mark). The applicant must demonstrate that the color has acquired source-indicating significance in the minds of consumers.

As noted above, the commercial impression of a color may change depending on the object to which it is applied. Therefore, evidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects, but not for other objects. See Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124. Cf. Qualitex, 514 U.S. at 163, 34 USPQ2d at 1162-63 ("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’").

1202.05(b) Functional Color Marks Not Registrable

A color mark is not registrable on the Principal Register under §2(f), or the Supplemental Register, if the color is functional. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165-66, 34 USPQ2d 1161, 1164 (1995); Brunswick Corp. v. Brit. Seagull Ltd., 35 F.3d 1527, 1530, 32 USPQ2d 1120, 1121-22 (Fed. Cir. 1994); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1120-21, 227 USPQ 417, 419 (Fed. Cir. 1985). A color may be functional if it yields a utilitarian or functional advantage, for example, yellow or orange for safety signs. Brunswick, 35 F.3d 1527, 32 USPQ2d 1120 (holding the color black functional for outboard motors because, while the color did not provide utilitarian advantages in terms of making the engines work better, it nevertheless provided recognizable competitive advantages in terms of being compatible with a wide variety of boat colors and making the engines appear smaller); In re Integra Biosciences Corp., 2022 USPQ2d 93, at *40-41 (TTAB 2022) (holding five different pastel colors for disposable pipette tips in colored rack inserts were functional as they were part of applicant’s color coding scheme to ensure that customers used the proper size pipette tips on the respective pipettes); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1791 (TTAB 2013) (holding the color black for floral packaging functional because there was a competitive need for others in the industry to use black in connection with floral arrangements and flowers to communicate a desired sentiment or occasion, such as elegance, bereavement, or Halloween); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1446-47 TTAB 2007 (holding a deep purple shade functional for coated abrasives, because opposer had established a prima facie case that coated abrasive manufacturers had a competitive need to be able to use various shades of purple, including applicant’s shade, and that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding"); In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000) (holding the color pink functional for surgical wound dressings because the actual color of the goods closely resemble[d] Caucasian human skin); In re Orange Commc'ns, Inc., 41 USPQ2d 1036 (TTAB 1996) (holding the colors yellow and orange functional for public telephones and telephone booths, because they are more visible in the event of an emergency under all lighting conditions); In re Howard S. Leight & Assocs., 39 USPQ2d 1058 (TTAB 1996) (holding the color coral functional for earplugs, because they are more visible during safety checks). A color may also be functional if it is more economical to manufacture or use. For example, a color may be a natural by-product of the manufacturing process for the goods. In such a case, appropriation of the color by a single party would place others at a competitive disadvantage by requiring them to alter the manufacturing process. See also In re Pollak Steel Co., 314 F.2d 566, 136 USPQ 651 (C.C.P.A. 1963) (reflective color on fence found to be functional); Kasco Corp. v. S. Saw Serv. Inc., 27 USPQ2d 1501 (TTAB 1993) (color green used as wrapper for saw blades is functional when the color is one of the six colors used in a color-coding system to identify the type of blade).

The doctrine of "aesthetic functionality" may apply in some cases where the evidence indicates that the color at issue provides specific competitive advantages that, while not necessarily categorized as purely "utilitarian" in nature, nevertheless dictate that the color remain in the public domain. Brunswick, 35 F.3d at 1533, 32 USPQ2d at 1124; In re Florists’ Transworld Delivery Inc., 106 USPQ2d at 1787-88; see TMEP §1202.02(a)(vi); see also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 58 USPQ2d 1001, 1006 (2001) (U.S. Supreme Court discussed aesthetic functionality, distinguishing Qualitex, 514 U.S. 159, 34 USPQ2d 1161, as a case where "[a]esthetic functionality was the central question").

1202.05(c) Color as a Separable Element

As with all trademarks and service marks, a color mark may contain only those elements that make a separable commercial impression. See TMEP §807.12(d). Accordingly, an applicant may not seek to register the color of the wording or design apart from the words or designs themselves if the color does not create a separate commercial impression. However, the applicant may register the color of the background material on which the words or design appear apart from the words or design. See TMEP §1202.11 regarding background designs and shapes.

The commercial impression of a color may change depending on the object to which it is applied. In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); In re Hayes, 62 USPQ2d 1443 (TTAB 2002). Granting an application for registration of color in the abstract, without considering the manner or context in which the color is used, would be contrary to law and public policy, because it would result in an unlimited number of marks being claimed in a single application. Cf. In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1368, 51 USPQ2d 1513, 1517-18 (Fed. Cir. 1999) (mark with changeable or "phantom" element unregistrable because it would "encompass too many combinations and permutations to make a thorough and effective search possible" and, therefore, would not provide adequate notice to the public); In re Upper Deck Co., 59 USPQ2d 1688, 1691 (TTAB 2001) (hologram of varying shapes, sizes, content, and positions used on trading cards constitutes more than one "device," as contemplated by §45 of the Trademark Act). Only one mark can be registered in a single application. TMEP §807.01.

1202.05(d) Drawings of Color Marks Required

All marks, other than sound and scent marks, require a drawing. TMEP §807. An application for a color mark that is filed without a drawing will be denied a filing date. 37 C.F.R. §2.21(a)(3). Similarly, an application for a color mark with a proposed drawing page that states "no drawing," or sets forth only a written description of the mark, will be denied a filing date. The drawing provides notice of the nature of the mark sought to be registered. Only marks that are not capable of representation in a drawing, such as sound or scent marks, are excluded from the requirement for a drawing. Color marks are visual and should be depicted in color drawings, accompanied by: (1) a color claim naming the color(s) that are a feature of the mark; and (2) a separate statement naming the color(s) and describing where the color(s) appear and how they are used on the mark. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07–807.07(g) for color mark drawings and 808–808.03(f) for description of the mark.

1202.05(d)(i) Drawings of Color Marks in Trademark Applications

In most cases, the proposed color mark drawing will consist of a representation of the product or product package. The drawing of the mark must be a substantially exact representation of the mark as used, or intended to be used, on the goods. 37 C.F.R. §2.51. A depiction of the object on which the color is used is needed to meet this requirement.

The object depicted on the drawing should appear in broken or dotted lines. The broken or dotted lines inform the viewer where and how color is used on the product or product package, while at the same time making it clear that the shape of the product, or the shape of the product package, is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. In the absence of a broken-line drawing, the USPTO will assume that the proposed mark is a composite mark consisting of the product shape, or the product package shape, in a particular color.

Color used on multiple goods

If the proposed color mark is used on multiple goods, the drawing required will depend on the nature of the goods. The drawing of the mark must be a substantially exact representation of the mark as used, or intended to be used, on the goods. 37 C.F.R. §2.51. A drawing consisting of a depiction of only one of the goods will be accepted if the goods, or the portions of the goods on which the color appears, are similar in form and function so that a depiction of only one of the goods is still a substantially exact representation of the mark as used on all of the goods. For example, if the mark is the color purple used on refrigerators and freezers, a drawing of a purple freezer shown in broken lines (with a description of the mark claiming the color purple and indicating that it is used on the freezer) would be sufficient. Or, if the mark is the color pink used on the handles of rakes, shovels, and hoes, a drawing of any of those items depicted in dotted lines (with a description of the mark claiming the color pink and stating that the handle is pink) would be sufficient. Or, if the mark consists of product packaging for various food items that is always blue with a pink circle, a drawing of any one of the packages shown in dotted lines (with a description of the mark claiming the colors blue and pink and describing the location of the colors on the packaging) would be sufficient.

If the proposed color mark is used on multiple goods that are dissimilar or unrelated, or if color is used in different ways on different goods, so that a depiction of one of the goods is not a substantially exact representation of the mark as used on all of the goods (e.g., the color purple used on microscopes and vending machines), a separate application must be submitted for each item.

Color used on liquids or powders

Sometimes a color mark consists of color(s) used on liquids or powders. For example, the mark might consist of fuchsia body oil or red, white, and blue granular washing machine detergent. In these cases, the nature of the drawing will depend on the manner of use of the liquid or powder. If the liquid or powder is visible through the product package, the drawing should consist of the shape of the product package shown in broken or dotted lines, with the description of the mark identifying the color(s) of the liquid or powder.

1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications

It is difficult to anticipate all of the issues that may arise when examining a proposed color mark for services because there are a myriad of ways that color can be used in connection with services. However, the following general guidelines will be used to determine the sufficiency of drawings in these cases:

The purpose of a drawing is to provide notice to the public of the nature of the mark. As with color used on goods, a color service mark does not consist of color in the abstract. Rather, the mark consists of color used in a particular manner, and the context in which the color is used is critical to provide notice of the nature of the mark sought to be registered. Therefore, as with color marks used on goods, a drawing, supplemented with a written description of the mark, is required.
The drawing must display the manner in which the mark is used in connection with the services. As with any application, only one mark can be registered in a single application. TMEP §807.01. The mark depicted on the drawing, as used on the specimen, must make a separate and distinct commercial impression in order to be considered one mark. See In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001); In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988). See TMEP §1202.05(c) regarding color as a separable element.
If color is used in a variety of ways, but in a setting that makes a single commercial impression, such as a retail outlet with various color features, a broken-line drawing of the setting must be submitted, with a detailed description of the mark claiming the color(s) and describing the location of the color(s).
If an applicant who seeks to register a single color as a service mark used on a variety of items not viewed simultaneously by purchasers, e.g., stationery, uniforms, pens, signs, shuttle buses, store awning, and walls of the store, submits a drawing that displays the mark as a solid-colored square with a dotted peripheral outline, the application will receive a filing date. However, the examining attorney will generally require the applicant to submit a single amended drawing showing how the mark is used in connection with the services. The applicant must also submit a detailed description of the mark identifying the color and describing its placement. Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124. See TMEP §1202.05(c) regarding color as a separable element.
The commercial impression of a color may change depending on the object on which it is applied. See Thrifty, 274 F.3d at 1353, 61 USPQ2d at 1124.

1202.05(d)(iii) Amendment of Drawings of Color Marks

Because color marks are comprised solely of the color as applied to the product or product package, in the manner depicted on the drawing and explained in the description of the mark, amending the color of the proposed mark will always change the commercial impression of the mark. Thus, the amendment of any color in a color mark is a prohibited material alteration. Similarly, the amendment of the color mark to show the same color on a different object is also, generally, a material alteration, e.g., an amendment of a drawing of a blue hammer to a blue saw is a material alteration.

1202.05(d)(iv) Drawings for Marks Including Both Color and Words or Design

Sometimes, a product or advertisement for a service will include both color and words or a design. For example, the surface of a toaster might be green, with the letters "ABC" and a design displayed on the toaster. In this situation, the applicant must decide whether to seek registration for the color green used on toasters, the letters "ABC" with or without the design, the design alone, or some combination of these elements. If applicant only seeks registration for the use of the color, no word or design elements should appear on the drawing.

1202.05(e) Written Descriptions of Color Marks

The drawing of a proposed color mark must be supplemented with: (1) a claim that the color(s) is a feature of the mark; and (2) a statement in the "Description of the Mark" field naming the color(s) and describing where the color(s) appear(s) and how they are used on the mark. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07–807.07(g) for color mark drawings and 808–808.03(f) for description of the mark.

The description of the mark must be clear and specific, use ordinary language, and identify the mark as consisting of the particular color as applied to the goods or services. If the color is applied only to a portion of the goods, the description must indicate the specific portion. Similarly, if the mark includes gradations of color, the description should so indicate. If the applicant is claiming a shade of color, the shade must be described in ordinary language, for example, "maroon," "turquoise," "navy blue," "reddish orange." This is required even if the applicant also describes the color using a commercial coloring system.

The applicant may not amend the description of the mark if the amendment is a material alteration of the mark on the drawing filed with the original application. 37 C.F.R. §2.72. See In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001). Cf. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997). See TMEP §§807.14–807.14(f) regarding material alteration.

The description of a color mark must be limited to a single mark, because only one mark can be registered in a single application. See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999); In re Hayes, 62 USPQ2d 1443 (TTAB 2002) . See TMEP §§807.01 regarding drawing must be limited to a single mark and 1202.05(c) regarding color as a separable element.

1202.05(f) Specimens for Color Marks

An application under §1 of the Trademark Act must be supported by a specimen that shows use of the proposed mark depicted on the drawing. Therefore, an applicant who applies to register a color mark must submit a specimen showing use of the color, either with a §1(a) application or with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ), in a §1(b) application. If a black-and-white specimen is submitted, the examining attorney will require a substitute specimen displaying the proposed color mark. See TMEP §904.02(c)(ii).

See TMEP §§904.03–904.07(b) regarding trademark specimens and 1301.04–1301.04(d) regarding service mark specimens.

1202.05(g) Special Considerations for Service Mark Applications

Although the applicant in In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121 (Fed. Cir. 2001), argued that it applied for the color blue per se as a service mark, the Court determined that the drawing controlled, such that the application was for the color blue applied to a building. Although the Court did not reach the issue of color per se as a service mark, the Court acknowledged the special evidentiary problem associated with showing acquired distinctiveness in this context. Id. at 1353, 61 USPQ2d at 1124 ("[E]vidence submitted to demonstrate acquired distinctiveness of a color may show consumer recognition with respect to certain objects (e.g., blue vehicle rental centers), but not for other objects (e.g., blue rental cars)."). Accordingly, any claim to color per se must be specific as to use and include evidence of acquired distinctiveness for each claimed use.

1202.05(h) Color Marks in §1(b) Applications

A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); TMEP §1202.05(a). But see In re Forney Indus., Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020) (a multiple-color mark used on product packaging may be inherently distinctive, depending on the character of the color design); TMEP §§1202.02(b)(ii); 1205.05(a). Generally, the examining attorney must refuse to register a color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.

The issue of whether the proposed color mark is functional requires consideration of the manner in which the mark is used. Generally, no refusal on these grounds will be issued in a §1(b) application until the applicant has submitted specimen(s) of use with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). See TMEP §§1102.01, 1202.02(d), 1202.03(e), 1202.05(b). The specimen(s) provide a better record upon which to determine the registrability of the mark. In appropriate cases, the examining attorney will bring the potential refusal to the applicant’s attention in the initial Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.

1202.05(i) Color Marks in §44 or §66(a) Applications

A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); TMEP §1202.05(a). But see In re Forney Indus., Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020) (a multiple-color mark used on product packaging may be inherently distinctive, depending on the character of the color design); TMEP §§1202.02(b)(ii); 1205.05(a). Generally, the examining attorney must refuse to register a proposed color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.

If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register. See TMEP §§1202.02(e), 1202.03(e), 1202.05(b). However, a mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).