Judgement Briefs

Intellectual Property Rights

Qualitex Co. v. Jacobson Products Co., Inc.

514 U.S. 159 (1995)

Citation
514 U.S. 159 (1995)
Court
Supreme Court of the United States
Date
28 March 1995
Bench
Full Court; Breyer J. delivered the unanimous opinion

Facts

  • Qualitex manufactured press pads used by dry-cleaning businesses.
  • Since the 1950s, it coloured its pads a distinctive green-gold shade.
  • Over time, customers came to associate that colour with Qualitex.
  • Jacobson Products entered the same market and began selling press pads in a very similar green-gold colour.
  • Qualitex registered the colour as a trademark and sued Jacobson for infringement.
  • Jacobson argued that colour alone could never function as a trademark.
  • It contended that recognising colour marks would:
  • deplete the limited range of available colours;
  • create uncertainty regarding shades;
  • improperly protect functional product features.
  • The Court of Appeals accepted the categorical objection to colour marks.
  • Qualitex appealed to the United States Supreme Court.

Issue

  • Whether a single colour, without words or symbols, can function as a trademark.
  • Whether the green-gold shade had acquired source-identifying significance.
  • Whether the colour was barred by the functionality doctrine.

Rule

  • A trademark may consist of any symbol or device capable of:
  • identifying source; and
  • distinguishing goods from those of others.
  • Colour may serve as a mark after it acquires secondary meaning.
  • Secondary meaning exists where consumers understand the feature as identifying one producer rather than merely describing the product.
  • A functional feature cannot be protected as a trademark.
  • A feature is functional where exclusive control would:
  • place competitors at a significant non-reputation-related disadvantage;
  • interfere with the product’s use, cost or quality.
  • Aesthetic functionality may also prevent protection where the feature is competitively necessary for reasons unrelated to source identification.

Application

  • The Court found no statutory language excluding colour from trademark protection.
  • Colour can perform the same source-identifying role as:
  • words;
  • logos;
  • packaging;
  • shapes.
  • Qualitex had used the green-gold shade consistently for many years.
  • Evidence indicated that dry-cleaning businesses had come to recognise the shade as identifying Qualitex’s pads.
  • The colour therefore had secondary meaning.
  • The colour was not functional for the press pads.
  • It did not:
  • improve pressing performance;
  • reduce manufacturing cost;
  • increase durability;
  • provide a necessary technical advantage.
  • The Court rejected the “colour depletion” argument.
  • If a market genuinely required competitors to use a limited set of colours, the functionality doctrine could prevent monopolisation.
  • It was unnecessary to bar all colour marks in advance.
  • The Court also rejected the “shade confusion” argument.
  • Trademark courts regularly compare:
  • similar words;
  • similar designs;
  • similar packaging.
  • Determining similarity between colour shades was not uniquely impossible.
  • Protection would extend only to the source-identifying colour as used for the relevant product.
  • Qualitex could not claim ownership of green-gold for every type of good or every commercial context.
  • The combination of secondary meaning and non-functionality made the particular use protectable.

Conclusion

  • The Supreme Court unanimously held that colour alone may function as a trademark.
  • Qualitex’s green-gold colour had acquired secondary meaning and was non-functional.
  • The colour registration was valid, and the categorical rule against colour marks was rejected.
  • Use this case for: a single colour may be protected when consumers treat it as a source identifier and the colour performs no functional or competitively necessary role.