®
Official Journal of the International Trademark Association
HIGH COURT ISSUE
Two Pesos v. Taco Cabana: Still More Interesting for
What It Did Not Decide
Joan L. Dillon & Michael Landau
Even More Parodic Than the Real Thing:
Parody Lawsuits Revisited
Bruce P. Keller and Rebecca Tushnet
Qualitex Revisited
Christopher C. Larkin
Wal-Mart v. Samara Brothers and Its Progeny
S. Lloyd Smith
TrafFix Revisited: Exposing the Design Flaw
in the Functionality Doctrine
Clifford W. Browning
Federal Dilution Claims After Moseley v. V Secret Catalogue
Howard J. Shire and Michelle Mancino Marsh
Brand Name and “Look-Alike” Drugs in Canada After Ciba-Geigy v.
Apotex: A Proposal for Relief From Slavish Imitation
Daniel R. Bereskin, Q.C.
A Sign of the Times? A Review of Key Trade Mark Decisions of the
European Court of Justice and Their Impact Upon
National Trade Mark Jurisprudence in the EU
Seiko Hidaka, Nicola Tatchell, Mark Daniels,
Bonita Trimmer and Adam Cooke
Significant Trademark Developments in the Asia-Pacific Region
Joseph S. Yang
Vol. 94
September-October, 2004
No. 5
Vol. 94 TMR
1017
QUALITEX REVISITED
By Christopher C. Larkin∗
I. INTRODUCTION
The United States Supreme Court’s 1995 decision in Qualitex
Co. v. Jacobson Products Co.1 was viewed by some at the time as a
mischievous precedent that might result in a flood of applications
to register single colors as trademarks, which would potentially
deplete the spectrum.2 Time has proven such fears to have been
unjustified. In the nine years since the decision, the issue of the
protection and registration of single colors has reassumed the
relatively obscure place in trademark law and practice that it held
prior to 1995, and there has been no demonstrable increase in the
number of colors successfully registered and protected as marks.
Instead, the most significant legacy of the case, resulting from
the Supreme Court’s own reinterpretation of it in two subsequent
decisions, has been as the foundation for judicially created rules
that there are categories of marks that are not inherently
distinctive and that the doctrine of functionality is applied
differently depending upon whether the issue is utilitarian or
“aesthetic” functionality. This legacy is ironic, given that the issues
of distinctiveness and functionality were only tangentially
addressed in the Qualitex opinion itself and were not the basis for
the holding in the case.
∗ Partner in the Los Angeles office of Seyfarth Shaw LLP, Associate Member of the
International Trademark Association. Mr. Larkin was the principal author of INTA’s
amicus curiae brief to the Supreme Court in Qualitex. The views expressed in this article
are solely those of the author and should not be attributed to his firm or its clients, or to
INTA. The author wishes to thank his associate Jeffrey A. Kobulnick for his assistance in
the preparation of this article.
1. 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995).
2. See, e.g., Kearns, Qualitex Co. v. Jacobsen Products Co.: Orange You Sorry the
Supreme Court Protected Color? 70 St. John’s L. Rev. 337 (1996). Similar views were
expressed within the INTA membership notwithstanding INTA’s institutional position as
an amicus curiae in Qualitex that a per se prohibition on the registration and protection of
single-color marks was inconsistent with the intent of Congress as expressed in the Lanham
Act. By way of example, at the INTA Mid-Year Meeting in November, 1994, a few months
before the Supreme Court heard argument in Qualitex, the author was part of a four-lawyer
panel that debated the protection of single colors as marks. Two of INTA’s most
distinguished members, Miles J. Alexander and Albert Robin, forcefully argued that single
colors simply should never be protected as marks for policy reasons.
1018
Vol. 94 TMR
II. THE QUALITEX LITIGATION
IN THE DISTRICT COURT AND
NINTH CIRCUIT COURT OF APPEALS
The Qualitex case arose from the efforts of Qualitex Company
to enforce claimed trademark rights in a particular green-gold
color of pads that it sold to dry cleaning firms for use on dry
cleaning presses. Qualitex first used the color in 1957, and by the
time of the litigation that reached the Supreme Court, it had used
the color for over 30 years and had achieved sales of over one
million press pads during that time. In 1989, Jacobson Products, a
competitor of Qualitex, began selling its own press pads in a
similar green-gold color. Qualitex sued in 1990 under Section 43(a)
of the Lanham Act in the United States District Court for the
Central District of California.
During the pendency of the suit, a federal registration of the
green-gold color issued to Qualitex,3 and Qualitex amended its
complaint to assert a claim for infringement of the registered
mark. After a bench trial, the district court entered findings of fact
and conclusions of law holding that Jacobson’s sale of its greengold press pads infringed Qualitex’s registered trademark and
constituted unfair competition.4 The district court found that
Qualitex’s green-gold color had acquired secondary meaning
through long and exclusive use and “image advertising,”5 that
Jacobson had failed to show that Qualitex’s registration was
invalid or that the green-gold color was functional,6 that there was
no competitive need for Jacobson to use the green-gold color and
that a single color could properly function as a mark.7 The district
court permanently enjoined Jacobson from using the green-gold
color or any color “so close to said color that it cannot be easily
distinguished from the Qualitex color by the casual user,”8 and it
awarded monetary damages to Qualitex. The court also dismissed
Jacobson’s counterclaim for cancellation of the Qualitex
registration, holding that Jacobson had failed to meet its burden of
showing that the registration was invalid.9
3. Reg. No. 1,633,711, issued on February 5, 1991, under Section 2(f) of the Lanham
Act.
4. Qualitex Co. v. Jacobson Prods. Co., 21 U.S.P.Q.2d 1457 (C.D. Cal. 1991).
5. Id. at 1461.
6. Id. at 1460.
7. Id. at 1458, 1460.
8. Id. at 1462.
9. Id.
Vol. 94 TMR
1019
Jacobson appealed to the Ninth Circuit, which affirmed the
judgment in favor of Qualitex on its trade dress infringement claim
under Section 43(a), but reversed the dismissal of Jacobson’s
counterclaim for cancellation and remanded the case to the district
court with directions to enter judgment in Jacobson’s favor
canceling Qualitex’s registration.10 With respect to the issue of
trademark protection for color per se, the Ninth Circuit
acknowledged that “[r]egistration of mere color is not explicitly
barred by the Lanham Act,” but that “the courts of appeals
generally have refused to grant trademark protection for color
alone.”11 Characterizing the issue before it as “whether to follow
the majority of circuits in holding that color alone cannot form the
basis for a trademark, or to acknowledge the exception of OwensCorning,” the Ninth Circuit “conclude[d] that the better rule is
that a trademark should not be registered for color alone”12
because of possible depletion of the spectrum of colors and the
possibility of “shade confusion” or having to “[d]raw[] distinctions
between close shades of color. . . .”13
The Ninth Circuit then proceeded to affirm the district court’s
conclusion that Jacobson’s sale of its press pads infringed
Qualitex’s trade dress, which the Ninth Circuit stated had been
defined by the district court as “the ‘total impression’ of the
Qualitex green-gold pad and its ‘SUN GLOW’ name. . . .”14 The
Ninth Circuit approved the district court’s findings that this “trade
dress” had been infringed and affirmed the district court judgment
granting injunctive and monetary relief to Qualitex, but reversed
the judgment for Qualitex on its claim for trademark infringement
and on Jacobson’s counterclaim and remanded the case to the
district court with orders to enter judgment canceling Jacobson’s
registration.
10. Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297, 1305 (9th Cir. 1994).
11. Id. at 1301 (citing In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1128-29 &
n.2 (Fed. Cir. 1985) (Bissell, J., dissenting)).
12. Id. at 1302.
13. Id.
14. Id. at 1304. This distinction between the green-gold color of Qualitex’s pads and its
“trade dress” was illusory. While it was true that the district court had defined Qualitex’s
trade dress as including the SUN GLOW mark, Qualitex, 21 U.S.P.Q.2d at 1462, its opinion
virtually ignored the word mark portion of the dress. The district court’s analysis of the
dress focused almost exclusively on the color as the key source-identifying feature of the
dress. As the Ninth Circuit itself noted, “Qualitex presented evidence that many purchasers
do not speak or read English well” and that “‘they are unlikely to exercise a sufficiently high
degree of care to avoid purchasing a Jacobson pad when they are shown a green-gold pad.’”
Qualitex, 13 F.3d at 1305.
1020
Vol. 94 TMR
Qualitex filed a petition for certiorari, supported by INTA and
others, and the Supreme Court granted certiorari15 to resolve a
split among the circuits regarding whether color alone was
registrable and protectible as a trademark.16
III. THE QUALITEX DECISION
IN THE SUPREME COURT
The Supreme Court framed the issue in Qualitex as “whether
the . . . Lanham Act . . . permits the registration of a trademark
that consists, purely and simply, of a color.”17 The Court
“conclude[d] that, sometimes, a color will meet ordinary legal
trademark requirements [and] [w]hen it does so, no special legal
rule prevents color alone from serving as a trademark.”18
Justice Breyer’s opinion for the Court began its analysis with
a discussion of the Lanham Act’s definition of a trademark,19 which
the Court found describes the universe of things that can qualify
as a trademark “in the broadest of terms.”20 “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.”21 The Court also found that “[a product’s] color is also
capable of satisfying the more important part of the statutory
definition of a trademark” requiring a “trademark,” to identify and
distinguish the source of a party’s goods22 because a color, like a
descriptive term, over time “can come to indicate a product’s
origin.”23
Having addressed the statutory language, the Court could not
“find in the basic objectives of trademark law any obvious
theoretical objection to the use of color alone as a trademark,
where that color has attained [a] ‘secondary meaning’ and
15. Qualitex Co. v. Jacobson Prods. Co., 512 U.S. 1287 (1994).
16. Compare Qualitex, 512 U.S. at 1286, and NutraSweet Co. v. Stadt Corp., 917 F.2d
1024, 1028 (7th Cir. 1990) (absolute prohibition against protection of color alone), with
Owens-Corning, 774 F.2d at 1116 (color registrable if otherwise eligible for trademark
protection), and Master Distribs., Inc. v. Pako Corp., 986 F.2d 219, 224 (8th Cir. 1993) (no
per se prohibition against protecting color alone as a mark). Contrary to the Ninth Circuit’s
claim, there was no clear majority rule against the registration of color per se.
17. Qualitex, 514 U.S. at 160-61.
18. Id. at 161.
19. 15 U.S.C. § 1127 (defining “trademark” as including “any word, name, symbol, or
device, or any combination thereof”).
20. Qualitex, 514 U.S. at 162.
21. Id.
22. Id.
23. Id. at 163.
Vol. 94 TMR
1021
therefore identifies and distinguishes a particular brand (and thus
indicates its ‘source’).”24 The Court discussed the economic benefits
(including reduced transaction costs for consumers) of protecting
marks and concluded that “[i]t is the source-distinguishing ability
of a mark—not its ontological status as color, shape, fragrance,
word, or sign—that permits it to serve these basic purposes.”25
The Court also could not “find a principled objection to the use
of color as a mark in the important ‘functionality’ doctrine of
trademark law”; this doctrine “prevents trademark law, which
seeks to promote competition by protecting a firm’s reputation,
from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature.”26 After discussing
functionality generally,27 the Court stated that “the fact that
sometimes color is not essential to a product’s use or purpose and
does not affect cost or quality . . . indicates that the doctrine of
‘functionality’ does not create an absolute bar to the use of color
alone as a mark.”28 The Court thus concluded that “color alone, at
least sometimes, can meet the basic legal requirements for use as a
trademark” because “[i]t can act as a symbol that distinguishes a
firm’s goods and identifies their source, without serving any other
significant function.”29 “Accordingly, unless there is some special
reason that convincingly militates against the use of color alone as
a trademark, trademark law would protect Qualitex’s use of the
green-gold color on its press pads.”30 The Court then proceeded to
address and reject four specific arguments made by Jacobson
against the protection of color per se.
First, the Court rejected the argument that permitting the
protection of single colors would result in “shade confusion,”
making it difficult for courts to draw conclusions in color cases. It
noted that courts routinely made decisions of degree in crafting
injunctions in trademark cases and “[w]e do not believe . . . that
color, in this respect, is special.”31
Second, the Court rejected the “color depletion” theory,
“largely because it relies on an occasional problem to justify a
blanket prohibition. When a color serves as a mark, normally
alternative colors will likely be available for similar use by
24. Id.
25. Id. at 164.
26. Id.
27. Id. at 164-65.
28. Id. at 165.
29. Id. at 166.
30. Id.
31. Id. at 167.
1022
Vol. 94 TMR
others. . . . [I]f that is not so—if a ‘color depletion’ or ‘color scarcity’
problem does arise—the trademark doctrine of ‘functionality’
normally would seem available to prevent the anticompetitive
consequences that Jacobson’s argument posits, thereby minimizing
that argument’s practical force.”32
Third, the Court rejected Jacobson’s reliance on pre-Lanham
Act cases suggesting that color per se could never be appropriated
as a trademark.33 Adopting a large portion of INTA’s argument as
an amicus curiae, the Court noted that when Congress amended
the Lanham Act through the Trademark Law Revision Act of
1988,34 it left unchanged the definition of “trademark” and that
this action (or inaction) occurred against the background of the
Federal Circuit’s opinion in Owens-Corning, the policy of the
United States Patent and Trademark Office (USPTO) to permit
the registration of color when it was otherwise eligible for
registration,35 and the recommendations of the then United States
Trademark Association’s Trademark Review Commission that “the
terms ‘symbol or device’ should not be deleted or narrowed to
preclude the registration of such things as a color, shape, smell,
sound, or configuration which functions as a mark,”36 upon which
recommendations Congress relied in amending the Lanham Act.37
“This history undercuts the authority of the precedent upon which
Jacobson relies.”38
Finally, the Court rejected Jacobson’s argument that there
was no need to protect color alone because color could always be
protected as part of overall trade dress, noting that “one can easily
find reasons why the law might provide trademark protection in
addition to trade dress protection.”39
Having rejected Jacobson’s four arguments, the Court
concluded that because color could sometimes qualify as a
trademark and because the district court had found that Qualitex’s
green-gold mark did so function, the Ninth Circuit’s ruling was in
error and should be reversed.
32. Id. at 168-69 (citing Owens-Corning, 774 F.2d at 1121).
33. Id at 170-71.
34. Id. at 172.
35. TMEP § 1202.04(e), at 1200-12 (Jan. 1986 ed.).
36. The United States Trademark Association Trademark Review Commission Report
and Recommendations to USTA President and Board of Directors, 77 TMR 375, 421 (1987).
37. 133 Cong. Rec. 32,812 (1987) (statement of Sen. DeConcini).
38. Qualitex, 514 U.S. at 173.
39. Id. at 174.
Vol. 94 TMR
1023
IV. THE LEGACY OF QUALITEX
Qualitex spawned a fair amount of scholarship and
commentary shortly after the decision and later in the 1990s,
much of which was devoted to the issue of whether colors could
ever be inherently distinctive,40 and some of which second-guessed
the Supreme Court41 or focused on what would need to be shown to
qualify for registration under the decision.42 The author’s views on
the long-term impact of the decision on trademark practice, with
the benefit of nine years’ hindsight, are discussed below.
V. POST-QUALITEX TTAB DECISIONS ON
REGISTRATION OF SINGLE COLORS43
A few months after Qualitex, the Trademark Trial and Appeal
Board (TTAB) reversed a refusal to register the color green for
disposable dental instruments in In re Denticator International,
Inc.44 Citing Qualitex only at the end of the opinion, the TTAB
found that the applicant had established a prima facie case of
acquired distinctiveness.45
Shortly thereafter, in In re Hudson News Co.,46 the TTAB
acknowledged the debate over whether Qualitex permitted the
registration of color on the basis of inherent distinctiveness. It
concluded that the Supreme Court’s opinion left that question
open, but noted that it appeared that acquired distinctiveness
40. See, e.g., K. Jordan & L. Jordan, Qualitex Co. v. Jacobsen Products Co., The
Unanswered Question—Can Color Ever Be Inherently Distinctive? 85 TMR 371 (1995); Note,
The Registrability of Color Per Se as a Trademark After Qualitex Co. v. Jacobson Products
Co., 40 St. Louis U. L.J. 611 (1996); Landau, Reconciling Qualitex with Two Pesos:
Ambiguity and Inconsistency from the Supreme Court, 3 UCLA Ent. L. Rev. 219 (1996); see
also In re Hudson News Co., 39 U.S.P.Q.2d 1915 (T.T.A.B. 1996) (collecting commentary and
cases).
41. See supra note 2.
42. See, e.g., James L. Vana, Color Trademarks, 7 Tex. Intell. Prop. L.J. 387 (1999).
43. As is regrettably so often the case, there are only a few citable TTAB decisions in
this area. This is reflected in those portions of the Trademark Manual of Examining
Procedure that instruct USPTO examining attorneys on the law with respect to single-color
marks. TMEP § 1202. There are more uncitable decisions that discuss Qualitex and its
impact on single-color registration, but because these decisions cannot be relied upon by the
TTAB, the USPTO, or trademark owners, this portion of the article discusses only citable
precedent. The author echoes the plea of many INTA members that the TTAB should
publish more of its decisions to provide additional citable precedents, in this relatively
unusual area of the law and in many more-common ones, to the trademark bar and its
clients.
44. 38 U.S.P.Q.2d 1218 (T.T.A.B. 1995).
45. Id. at 1220.
46. 39 U.S.P.Q.2d 1915 (T.T.A.B. 1996).
1024
Vol. 94 TMR
might be required by Federal Circuit precedent.47 The TTAB found
that the color blue was not de jure functional for the applicant’s
retail stores services,48 but affirmed the refusal of registration on
the ground that the mark was not inherently distinctive.49
As late as its 2000 decision in In re Glaxo Group Ltd.,50 the
TTAB still read Qualitex as theoretically allowing registration of
an inherently distinctive color, although it did not find in that case
that the applicant’s color was inherently distinctive. But once the
Supreme Court decided Wal-Mart Stores, Inc. v. Samara Bros.,
Inc.51 later that year, and held that under Qualitex color was never
inherently distinctive,52 the TTAB reversed course and held in In
re Ferris Corp.53 that color marks were registrable only upon a
showing of acquired distinctiveness. In addition, the TTAB found
that the acquired distinctiveness burden was higher in the case of
color marks than with other marks “because of the inherent nondistinctive nature of the applied-for mark. It is our view that
consumers do not associate a single color of a product with a
particular manufacturer as readily as they do a trademark or
product packaging trade dress.”54
Qualitex also had an impact before the TTAB with respect to
the issue of functionality as applied to the registration of color per
se. In In re Orange Communications, Inc.,55 and In re Howard S.
Leight & Assocs., Inc.,56 the TTAB read Qualitex to preclude the
registration of color where color served a primarily utilitarian
purpose, even if that purpose “[did] not make a product function
better mechanically or be less expensive to manufacture. . . .”57 In
those cases, the TTAB found the bright colors orange and yellow to
be functional as used in connection with pay telephone cabinets
and industrial earplugs, respectively.
47. Id. at 1923 n.17 (“the debate continues over the specific holdings by the Supreme
Court” in Qualitex and “centers on whether or not secondary meaning must be
demonstrated for [color] marks”).
48. Id. at 1924.
49. Id.
50. 53 U.S.P.Q.2d 1920 (T.T.A.B. 2000).
51. 529 U.S. 205, 120 S. Ct. 1339, 146 L. Ed. 2d 182 (2000).
52. See infra notes 101-10 and accompanying text.
53. 59 U.S.P.Q.2d 1587 (T.T.A.B. 2000) (affirming refusal to register pink for wound
dressings).
54. Id. at 1591. The Trademark Manual of Examining Procedure now explicitly states
that “[c]olor marks are never inherently distinctive” and that “[t]he burden of proving that a
color mark has acquired distinctiveness is substantial.” TMEP § 1202.05(a).
55. 41 U.S.P.Q.2d 1036 (T.T.A.B. 1996).
56. 39 U.S.P.Q.2d 1058 (T.T.A.B. 1996).
57. In re Orange Communications Inc., 41 U.S.P.Q.2d 1036, 1042 (1996).
Vol. 94 TMR
1025
A. An Analysis of Post-Qualitex Registrations
of Single Colors
As noted at the outset, some predicted that judicial approval of
trademark protection for single colors in Qualitex would spawn
numerous applications to register colors. Although precise
statistics do not exist, the available evidence suggests that, as a
practical matter, the decision did not result in any significant
increase in applications, at least not successful ones.
Shortly after the decision, a USPTO official estimated that
about 30 companies had registered single colors in the 10 years
between the Federal Circuit’s decision in Owens-Corning and the
Qualitex decision.58 A May 2004 search of the USPTO database
suggests that the number of single-color registrations that have
issued in the nine years since the Qualitex decision is roughly the
same.59 Using a search criterion to identify registrations in which
the registrant described its mark as consisting of a single color
applied to its goods or services,60 there appear to be 27 such
registrations on the Principal Register, and 10 such registrations
on the Supplemental Register, that have issued in the nine years
since Qualitex was decided.61 Taking into account the increase
during that period in the number of applications and registrations
in general, the search suggests that the proportion of single-color
registrations to registrations of other types of marks has not
increased and may actually have decreased.
The primary reason for the apparent lack of increase in singlecolor registrations in absolute or proportional terms appears to be
that while Qualitex was viewed by some at the time as a
58. Sachs, High Court’s Ruling May Color Ad Plans, Advertising Age, Apr. 10, 1995
(quoting Lynne G. Beresford).
59. The author wishes to thank Thomson & Thomson for providing the search on which
this portion of the article is based. Neither the author nor Thomson & Thomson warrants
that the search or this article identifies every single-color registration that has issued since
Qualitex. The purpose of the search was simply to try to identify any discernible general
trends in color registration practice after Qualitex. The author regrets the omission of any
single-color registration from the discussion in this article, and is solely responsible for any
errors in analyzing the registrations disclosed in the search.
60. Section 1202.05(e) of the Trademark Manual of Examining Procedure requires,
inter alia, a written description of all color marks that “must . . . identify the mark as
consisting of the particular color as applied to the goods or services.” TMEP § 1202.05(e).
The author excluded from this discussion registrations of marks consisting of a combination
of colors, or a combination of a single color with a design feature.
61. This number does not include pre-Qualitex registrations that were renewed
following the decision. Some of the registrations discussed in this article issued from
applications that were filed prior to the Qualitex decision. Several applications to register
such marks appear to be in various stages of prosecution, and a few have been published for
opposition.
1026
Vol. 94 TMR
“landmark decision”62 that might make it more likely that
individuals and companies would pursue protection of single-color
marks,63 the reality regarding USPTO practice was different. As
one commentator put it at the time, “[a]lthough the rule of law
announced in that case sounds dramatic, its application is in fact
limited, and companies that seek trademark protection for colors
will need to take calculated steps to stake their claims.”64 It is
important to recall that the decision ratified a USPTO practice of
registering eligible color marks that, as Justice Breyer noted in the
Qualitex opinion, had been in place since the Federal Circuit’s
decision in Owens-Corning.65 As a result, Qualitex did not work a
sea change, or even much change at all, in USPTO prosecution
practice, except possibly to make registration of color marks
somewhat more, not less, difficult to achieve.
The characteristics of the post-Qualitex registrations
mentioned above provide some insight into the practical effect of
the decision on USPTO practice. Virtually all of the Principal
Register registrations state on their face that they were issued on
the basis of a showing of acquired distinctiveness under
Section 2(f) of the Lanham Act.66 Two-thirds of the Principal
Register registrations were based upon claimed use in commerce of
at least 10 years as of the time of registration, with periods of 81,67
62. See, e.g., Ian C. Ballon, Color This Suit Full of Complexity, Pittsburgh Post-Gazette,
Apr. 30, 1995.
63. See supra note 58.
64. See supra note 58.
65. Qualitex, 514 U.S. at 172.
66. The abstracts of four of these registrations do not reflect that they issued under
Section 2(f): (1) Reg. No. 1,931,569, for blue for plastic foam insulation for use in building
and construction; (2) Reg. No. 2,047,170, for bright green for tire sealant that seals
punctures in tube and tubeless tires; (3) Reg. No. 2,596,539, for purple for protective gloves
for industrial, surgical and medical uses; and (4) Reg. No. 2,661,572, for green for ketchup
made from ripe red tomatoes with green color. Reg. No. 1,931,569, which involved a mark
claimed to be in use for over 30 years as of the date of the filing of the application from
which the registration issued, and Reg. No. 2,047,170 issued when there was still an open
question under the TTAB cases discussed above as to whether color could ever be inherently
distinctive. In the prosecution of the applications that matured into Reg. Nos. 2,596,539 and
2,661,572, the applicants provided evidence of acquired distinctiveness on the basis of sales
and advertising of goods under the respective marks.
67. Reg. No. 2,131,693, for brown for motor vehicle transportation and delivery of
personal property services.
Vol. 94 TMR
1027
62,68 57,69 42,70 34,71 3372 and 30 years claimed by various
registrants.73 Some registrants claimed much shorter periods,
however, including periods of about seven,74 six,75 five,76 four,77
three78 and one and one-half years.79 The Trademark Manual of
Examining Procedure instructs USPTO examining attorneys that
“[t]he burden of proving that a color mark has acquired
distinctiveness is [a] substantial [one],”80 and the post-Qualitex
registrations indicate that the burden is most easily carried
through proof of long use of a color mark, but this wide range of
periods of use suggests that acquired distinctiveness can be shown
under appropriate circumstances by an applicant who has been
using its mark for a relatively short period of time in a manner
that has caused it rapidly to become identified with the applicant
as an indicator of source.81
68. Reg. No. 2,416,794, for “robin’s-egg blue” for retail store and mail order catalog
services.
69. Reg. No. 2,745,420, for red for metal scaffolds and metal shores.
70. Reg. No. 2,650,903, for red for electric arc welders.
71. Reg. No. 1,931,569, see supra note 66.
72. Reg. No. 2,675,776, for yellow for the packaging and containers for various parts of
on- and off-road vehicles.
73. Reg. No. 2,256,226, for orange for the background of the packaging for candy and
confectionary chips for baking with peanut butter as the characterizing flavor or as one of
various characterizing flavors, excluding candy or confectionary chips for baking that are
either orange in color or orange flavored.
74. Reg. No. 2,241,428, for brown-red for ulcerative colitis medication, and Reg. No.
2,047,170, see supra note 66.
75. Reg. No. 2,047,170, see supra notes 66, 74 and Reg. No. 2,655,205, for green for
dielectric insulating oil for use in electrical transformers.
76. Reg. No. 2,596,539, see supra note 66, and Reg. No. 2,732,433, for orange for a
radiant electric heating apparatus, namely, meshwork mats holding electrical space heating
elements for installation under finished flooring.
77. Reg. No. 2,577,376, for pink for “high bounce balls having a diameter of between 5.5
and 6 centimeters for use in playing urban street games,” and Reg. No. 2,184,272, for “brite
green” for copy fulfillment services for legal documents.
78. Reg. No. 2,138,567, for “burnt-orange” for curable, rubber-based sealant
compositions for use on tubeless tire inner liners in conjunction with rubberized cord located
in punctures in such tires.
79. Reg. No. 2,661,572, see supra note 66.
80. TMEP § 1202.05(a).
81. Reg. No. 2,661,572, for green for ketchup made from ripe red tomatoes with green
color, is a good example. This registration resulted from an intent-to-use application filed by
H.J. Heinz Company, which amended the application to claim use of the mark for only
about 15 months as of the time of Heinz’s Section 2(f) showing. Heinz proved acquired
distinctiveness to the satisfaction of the USPTO on the basis of evidence of its publicity of
the introduction of green ketchup (which one news story called a “shocker”); retail sales of
over $11 million and advertising expenditures of over $5 million and “look-for” marketing
1028
Vol. 94 TMR
Many of the registrations on the Principal Register cover
goods whose nature, like that of the laundry press pads in
Qualitex, is such that a single color might readily be viewed as a
source-identifier by their industrial or specialized users (as de
facto inherently distinctive), or for other reasons. Examples
include registrations of red for “machine parts, namely link V
belts,”82 “non-woven and knit fabric dampening covers and sleeves
for use on printing presses,”83 “metal scaffolds and metal shores,”84
and “electric arc welders”;85 a registration of blue for “plastic foam
insulation for use in building and construction”;86 a registration of
purple for “protective gloves for industrial use and disposable
nitrile gloves for use in laboratories and cleanroom environments”
and “gloves for medical and surgical uses”;87 a registration of “hot
yellow green II” for “vehicles, namely forklift trucks”;88 a
registration of mint green for “building structures insulation
materials, namely, rigid foam plastic insulation and woven plastic
housewrap, for use in building and construction”;89 a registration
of green for “dielectric insulating oil for use in electrical
transformers”;90 a registration of orange for “radiant electric
heating apparatus, namely, meshwork mats holding electric space
heating elements for installation under finished flooring”;91 and a
registration of burnt orange for “curable, rubber-based sealant
compositions for use on tubeless tire inner liners in conjunction
with rubberized cord located in punctures in such tires.”92
Consistent with the admonition in the Trademark Manual of
Examining Procedure that “[c]olor . . . is usually perceived as an
ornamental feature of the goods,”93 these registrations suggest that
an applicant is most likely to be successful in trying to register a
single-color mark where, in context, the use of the subject color is
unusual, unexpected or unnecessary.
focus on the color green, including using the mark under a license of the green SHREK
character from the ACADEMY AWARD–winning animated film.
82. Reg. No. 2,022,826.
83. Reg. No. 2,445,619.
84. Reg. No. 2,745,420, see supra note 69.
85. Reg. No. 2,650,903, see supra note 70.
86. Reg. No. 1,931,569, see supra note 66.
87. Reg. No. 2,596,539, see supra note 66.
88. Reg. No. 2,085,234.
89. Reg. No. 2,161,198.
90. Reg. No. 2,655,205, see supra note 75.
91. Reg. No. 2,732,355, see supra note 76.
92. Reg. No. 2,138,567, see supra note 78.
93. TMEP § 1202.05.
Vol. 94 TMR
1029
At the same time, however, some post-Qualitex registrations
cover colors used in connection with goods and services that are
familiar to members of the general public, including light blue for
Tiffany & Co.’s retail catalog services,94 brown for UPS’s
transportation and delivery services,95 green for Heinz’s ketchup,96
medium blue for Mauna Loa’s macadamia nuts,97 and canary
yellow for 3M’s stationery notes.98 There are also two registrations
of single colors for medications,99 goods for which Qualitex had
suggested color might be especially prone to having a functional
significance.100 Though relatively few in number, these
registrations collectively indicate that it is possible for single colors
to function as marks for widely used goods and services if the
putative registrants are willing and able to make the sustained
investment over time necessary to develop secondary meaning in a
competitive environment where the use of color is commonplace.
Post-Qualitex USPTO prosecution practice, reflected in the
handful of TTAB decisions and the Principal Register registrations
discussed above, makes it clear that while the decision clarified the
requirements for the protection and registration of single colors as
marks, it did not relax them significantly or otherwise incentivize
numerous would-be registrants to seek to appropriate single colors
as marks.
VI. QUALITEX AND THE DOCTRINES OF
DISTINCTIVENESS AND FUNCTIONALITY
Although Qualitex decided a relatively narrow issue under
Section 2 of the Lanham Act, the Supreme Court subsequently
read the decision to stand for two propositions other than that
single-color marks were eligible for registration and protection. As
a result, Qualitex took on unintended importance in other areas of
trademark law, most significantly on the issue of functionality.
94. See supra note 68.
95. See supra note 67. This registration and the Tiffany registration, see supra note 68,
belie the statement in the Trademark Manual of Examining Procedure that “[n]o service
mark registrations have issued for a single color per se.” TMEP § 1020.05(g).
96. See supra note 81.
97. Reg. No. 2,237,914.
98. Reg. No. 2,390,667.
99. Reg. No. 2,241,428, see supra note 74, and Reg. No. 2,806,099.
100. See infra note 126.
1030
Vol. 94 TMR
A. Wal-Mart and Non-Inherently Distinctive Marks
In Wal-Mart Stores, Inc. v. Samara Bros.,101 the Court granted
certiorari to define the standards under which the inherent
distinctiveness of product configuration trade dress was to be
determined,102 an issue left open in the Court’s decision in Two
Pesos, Inc. v. Taco Cabana, Inc.103 But the Court dodged that issue
by holding that “in an action for infringement . . . under § 43(a) of
the Lanham Act, a product’s design is distinctive, and therefore
protectible, only upon a showing of secondary meaning.”104
Qualitex provided the authority for the Court’s determination that
product design was one type of trade dress that could never be
inherently distinctive.
The Wal-Mart Court began its analysis by noting that nothing
in Section 2 of the Lanham Act demanded the conclusion that
every category of mark necessarily includes some marks that are
inherently distinctive. The Court cited Qualitex for the proposition
that “with respect to at least one category of mark—colors—we
have held that no mark can ever be inherently distinctive.”105 The
Court’s observations in Qualitex regarding secondary meaning
were arguably dicta given that the existence of secondary meaning
was not at issue in the case, but the Wal-Mart Court read Qualitex
to clearly hold that some categories of marks “do[] not ‘almost
automatically tell a customer that [they] refer[] to a brand,’ . . . and
do[] not ‘immediately . . . signal a brand or product “source”.’”106 In
the view of the Wal-Mart Court, “design, like color, is not
inherently distinctive” because “[i]n the case of product design, as
in the case of color, we think consumer predisposition to equate the
feature with the source does not exist.”107
The Wal-Mart Court also cited Qualitex for the proposition
that the issue of functionality of a product’s trade dress “may
involve consideration of its esthetic appeal.”108 But functionality
101. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 120 S. Ct. 1339, 146 L. Ed. 2d
182 (2000).
102. 528 U.S. 808, 120 S. Ct. 308, 145 L. Ed. 2d 35 (1999). The precise question on which
certiorari was granted was “What must be shown to establish that a product’s design is
inherently distinctive for purposes of Lanham Act trade-dress protection?”
103. 505 U.S. 763, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992).
104. Wal-Mart, 529 U.S. at 216. The wisdom of this “bright-line” rule and its application
in subsequent cases are beyond the scope of this article.
105. Id. at 211, citing Qualitex, 514 U.S. at 162-63.
106. Id. at 212 (citations omitted) (emphasis in original) (quoting Qualitex, 514 U.S. at
163).
107. Id. at 212, 213.
108. Id. at 214 (citing Qualitex, 514 U.S. at 170).
Vol. 94 TMR
1031
was discussed in the Qualitex decision in response to two of the
respondent’s arguments in support of the Ninth Circuit’s per se
prohibition on the protection of single colors as marks. The
Qualitex Court did not announce any general rule that
functionality had anything to do with the “aesthetic appeal” of
color or any other product feature; instead, the Court noted that
“sometimes color is not essential to a product’s use or purpose and
does not affect cost or quality,”109 and can be protected under those
circumstances, and that color is functional where it serves to
identify a product or a feature of a product, or where its
appropriation by one producer would hinder competition because
color otherwise affects the cost or quality of the particular
product.110
The Wal-Mart Court’s citation of Qualitex on the doctrine of
functionality would be followed shortly by a more extensive and
troubling discussion of the impact of the case on that issue in the
Court’s October 2000 Term.
B. TrafFix and “Aesthetic Functionality”
In TrafFix Devices, Inc. v. Marketing Displays, Inc.,111 the
“principal question . . . [was] the effect of an expired patent on a
claim of trade dress infringement.”112 This issue required the Court
expressly to consider the doctrine of functionality in the most
utilitarian of contexts, with respect to the wind-resisting features
of the design of certain highway warning signs. Nevertheless, the
Court cited and discussed Qualitex as a principal authority on the
functionality doctrine.113
The TrafFix Court defined a functional feature as one that is
“‘essential to the use or purpose of the article or [that] affects the
cost or quality of the article,’” and “the ‘exclusive use of [which]
109. Qualitex, 514 U.S. at 165.
110. Id. at 169-70 (collecting cases).
111. 532 U.S. 23, 121 S. Ct. 1255, 149 L. Ed. 2d 164 (2001).
112. Id. at 29.
113. The TrafFix Court also cited Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 102 S. Ct. 2182, 72 L. Ed. 2d 606 (1982), which, like Qualitex, dealt only
indirectly with the question of functionality. Justice O’Connor, the author of the majority
opinion in Inwood, framed the issue as involving “the circumstances under which a
manufacturer of a generic drug, designed to duplicate the appearance of a similar drug
marketed by a competitor under a registered trademark, can be held vicariously liable for
infringement of that trademark by pharmacists who dispense the generic drug.” Id. at 846.
While the functionality of the colors of the tablets at issue in Inwood was part of the
decision under review, the Supreme Court focused its attention on the appellate court’s
improper disregard, under the “clearly erroneous” standard of Rule 52(a) of the Federal
Rules of Civil Procedure, of the trial court’s factual findings on that and other issues. The
Court did not analyze the law of functionality in any detail.
1032
Vol. 94 TMR
would put competitors at a significant non-reputation-related
disadvantage.’”114 The Court criticized the Sixth Circuit’s analysis
in the decision under review115 as having misread Qualitex as
standing for the proposition that a necessary test for functionality
was “‘whether the particular product configuration is a competitive
necessity.’”116 The Court held that where a product feature was
essential to the use or purpose of the device, or affected its cost or
quality, it was unnecessary to consider whether there was a
competitive need to use the feature.117
In reaching that conclusion, the opinion in TrafFix suggested
that there was a distinction between traditional (utilitarian)
functionality and “aesthetic functionality, the question involved in
Qualitex.”118 According to the Court, in cases of “aesthetic
functionality,” “[i]t is proper to inquire into a ‘significant nonreputation-related disadvantage,’” but “[w]here the design is
functional under the Inwood formulation there is no need to . . .
consider if there is a competitive necessity for the feature.”119 In
the view of the TrafFix Court, even though the Qualitex decision
had cited the “Inwood formulation” as the test for functionality,
the case itself involved “aesthetic functionality” because there was
“no indication that the green-gold color of the laundry press pad
had any bearing on the use or purpose of the product or its cost or
quality.”120
The TrafFix Court’s reading of Qualitex was troubling for two
reasons. First and foremost, of course, the question in Qualitex was
not aesthetic functionality, but rather “whether the . . . Lanham
Act . . . permits the registration of a trademark that consists,
purely and simply, of a color.”121 The Qualitex Court found that the
doctrine of functionality provided a judicial check on the possible
anticompetitive consequences of protecting aesthetic product
features such as single colors,122 but “aesthetic functionality was
not the question in any way in Qualitex, let alone the ‘central
question.’”123 As a result, the Court’s comments on it were dicta,124
114. TrafFix, 532 U.S. at 32 (quoting Qualitex, 514 U.S. at 165) (internal citations
omitted).
115. Marketing Displays, Inc. v. TrafFix Devices, Inc., 200 F.3d 929 (6th Cir. 2000).
116. TrafFix, 532 U.S. at 32 (quoting TrafFix, 200 F.3d at 940).
117. Id. at 33.
118. Id.
119. Id.
120. Id.
121. Qualitex, 514 U.S. at 160.
122. Id. at 169-70.
123. 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7.80,
at 7-202 (4th ed. 2003) [hereinafter McCarthy]. Professor McCarthy characterized Justice
Vol. 94 TMR
1033
but through the Court’s TrafFix opinion, Qualitex morphed into
the leading word on the doctrine of functionality and its supposed
subspecies, aesthetic functionality.
Second, while the Qualitex decision mentioned aesthetic
functionality in passing,125 the real-world applications of the
functionality doctrine to color marks discussed by the Court all
involved the possible effect of color on the use or purpose of the
goods at issue under the Inwood formulation.126 Nothing in the
opinion’s discussion of precedent supported the notion that some
sort of different standard should be applied when assessing
whether an aesthetic (as opposed to utilitarian) feature was
functional, or that the mere attractiveness of a color could render
it functional.127 Indeed, in one portion of the opinion, Justice
Breyer specifically noted that color could be protected as a
trademark notwithstanding the functionality doctrine where it “is
not essential to a product’s use or purpose and does not affect cost
or quality. . . .”128
Kennedy’s observation to the contrary in TrafFix as an “amazing and incomprehensible
statement.” See also Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1276 (Fed. Cir. 2002).
124. See Antioch Co. v. Western Trimming Corp., 347 F.3d 150, 155 (6th Cir. 2003) (“the
Supreme Court has never directly addressed aesthetic functionality . . .”).
125. The Court cited Section 17 of the Restatement (Third) of Unfair Competition for the
proposition that “the ‘ultimate test of aesthetic functionality . . . is whether the recognition
of trademark rights would significantly hinder competition.’” Qualitex, 514 U.S. at 170
(quoting Restatement (Third) of Unfair Competition § 17 cmt. c, at 176 (1993)).
126. Qualitex, 514 U.S. at 169-70 (citing Inwood, 456 U.S. at 853, 858 n.20 (colors can be
used to differentiate medications)); Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (S.D.
Iowa 1982), aff’d, 721 F.2d 253 (8th Cir. 1983) (green functional for farm equipment because
it enabled farm equipment to match); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527,
1532 (Fed. Cir. 1994) (black functional for outboard motors because it made motors appear
smaller and was compatible with different boat colors); Nor-Am Chem. v. O.M. Scott & Sons
Co., 4 U.S.P.Q.2d 1316, 1320 (E.D. Pa. 1987) (blue functional for fertilizer because it
indicates the presence of nitrogen). The TTAB later read the Federal Circuit’s Brunswick
decision as involving “the use of color [to] serve[] a primarily utilitarian purpose. . . .” In re
Orange Communications, Inc., 41 U.S.P.Q.2d 1036, 1042 (T.T.A.B. 1996).
127. Justice Breyer mused that color could serve a significant nontrademark function
where it “satisf[ied] the ‘noble instinct for giving the right touch of beauty to common and
necessary things.’” Qualitex, 514 U.S. at 170 (quoting G. Chesterton, Simplicity and Tolstoy
61 (1912)). Given the nature of the “authority” upon which it was based, this curious
statement, which was juxtaposed with the observation that color also serves a function
where it “distinguish[es] a heart pill from a digestive medicine,” id., is most plausibly read
as a perhaps unintended reference to the “ornamentation” doctrine of trademark law. As
Professor McCarthy notes, “‘[a]esthetic functionality’ is an inappropriate response to a valid
concern. The concern is over features that are merely ornamental and therefore not
perceived by customers as indicia of origin—trademarks. However, trademark law has long
had a rule to deal with that situation: the ‘merely ornamental’ rule. The ‘merely ornamental’
rule is simply a facet of the basic trademark question: is the disputed feature in fact
perceived by customers as a trademark or not?” 1 McCarthy, supra note 123, § 7:81, at
7-213.
128. Qualitex, 514 U.S. at 165 (emphasis added).
1034
Vol. 94 TMR
Professor McCarthy has correctly observed that “Justice
Kennedy’s confusing dictum in Traffix [regarding Qualitex] only
further clouded and obscured the issue of whether aesthetic
functionality is in fact to be given any weight.”129 The Trademark
Manual of Examining Procedure reflects this uncertainty in noting
that “[a]lthough the references to aesthetic functionality in the
TrafFix decision are dicta, the Court’s use of this terminology
appears to indicate that the concept of aesthetic functionality—at
least when used properly—is a viable legal principle.”130
The Sixth Circuit (from which the TrafFix case had originated)
read the reference in TrafFix to the Qualitex “aesthetic
functionality” concept to “identi[fy] two forms of functionality.”131
“The first, traditional functionality, deems a feature functional
when “‘it is essential to the use or purpose of the device or when it
affects the cost or quality of the device.’”132 In the view of the Sixth
Circuit, Qualitex “‘expand[ed] upon the meaning of the phrase [by]
observing that a functional feature is one the “exclusive use of
which would put competitors at a significant non-reputationrelated disadvantage,”’” explaining “the policy underlying the
functionality doctrine in a way readily adaptable to the problem of
aesthetic functionality, the issue presented in Qualitex.”133 “Thus,
the
‘significant
non-reputation-related
disadvantage’
to
competitors approach is the second form of trade dress
functionality.”134
Most courts, however, have rejected the doctrine of aesthetic
functionality hinted at in TrafFix, at least where it is expressed as
“the notion that a purely aesthetic feature can be functional.”135
Although there have been few reported post-Qualitex cases
discussing when color is functional, that issue has been sensibly
analyzed in those decisions,136 and the USPTO appears properly to
129. 1 McCarthy, supra note 123, § 7:80, at 7-202.
130. TMEP § 1202.02(a)(iii)(C).
131. Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619,
641 (6th Cir. 2002).
132. Id. (quoting Qualitex, 514 U.S. at 165).
133. Id. (citing TrafFix, 121 S. Ct. at 1261-62).
134. Id.
135. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1260 (9th Cir. 2001). See 1
McCarthy, supra note 123, § 7.80, at 7-202-12 (collecting cases).
136. See L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1353 (Fed. Cir. 1999) (“rusttype” appearance of finish of backplate for lighting fixtures not functional as a matter of law
where it was admittedly color-compatible with interior furnishings because district court
failed to examine competitive need to use this color. “Mere taste or preference cannot render
a color—unless it is ‘the best, or at least one, of a few superior designs’—de jure functional”);
In re Orange Communications, 41 U.S.P.Q.2d at 1042 (bright orange and yellow functional
for pay telephone cabinets because it made the goods more visible in emergencies); In re
Vol. 94 TMR
1035
have synthesized and harmonized the confusing principles from
Qualitex and TrafFix in the portion of the Trademark Manual of
Examining Procedure dealing with aesthetic functionality. While
paying lip service to the existence of such a separate doctrine, the
Trademark Manual of Examining Procedure sets forth a
reasonable way to evaluate the functionality of color and other
similarly “aesthetic” features, or to avoid the aesthetic
functionality morass entirely by applying the established
prohibition on registration of ornamental subject matter:
The Supreme Court’s use of the term “aesthetic functionality”
in the TrafFix case appears limited to cases where the issue is
one of actual functionality, but where the nature of the
proposed mark makes it difficult to evaluate the functionality
issue from a purely utilitarian standpoint. This is the case
with color marks and product features that enhance the
attractiveness of the product. The color or feature does not
normally give the product a truly utilitarian advantage (in
terms of making the product actually perform better), but may
still be found to be functional because it provides other real
and significant competitive advantages and thus should
remain in the public domain. . . . Generally speaking,
examining attorneys should exercise caution in the use of the
term “aesthetic functionality,” in light of the confusion that
historically has surrounded this issue. In most situations,
reference to aesthetic functionality will be unnecessary, since
a determination that the matter sought to be registered is
purely ornamental in nature will result in an ornamentation
refusal under §§1, 2 and 45, and a determination that the
matter sought to be registered is functional will result in a
functionality refusal under §2(a)(5).137
This approach suggests that the Supreme Court’s misreading
of Qualitex in TrafFix has not done much permanent damage to
Howard S. Leight and Assocs., Inc., 39 U.S.P.Q.2d 1058, 1060 (T.T.A.B. 1996) (orange
functional for industrial earplugs because it increased ease of safety checks and monitoring
of employee compliance with health and safety regulations); In re Ferris Corp., 59
U.S.P.Q.2d 1587, 1591 (T.T.A.B. 2000) (pink functional for bandages because it was “one of
the best or at least one of the few superior ‘flesh colors’ available for wound dressings”); see
also M-5 Steel Mfg., Inc v. O’Hagin’s Inc., 61 U.S.P.Q.2d 1086 (T.T.A.B. 2001) (designs of
metal ventilating ducts for concrete and tile roofs functional for a combination of utilitarian
and aesthetic reasons because, inter alia, designs were compatible with various roof designs
and were unobtrusive in nature).
137. TMEP § 1202.02(a)(iii)(C). The Trademark Manual of Examining Procedure also
provides specifically that “[t]he 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.” Id. § 1202.05(b).
1036
Vol. 94 TMR
the law of functionality and that courts and the USPTO are able
properly to apply the functionality doctrine to color marks and
other marks whose nature is such that the traditional Inwood
analysis is difficult to apply.
VII. CONCLUSION
Qualitex decided a relatively unusual issue in trademark law
that had a direct impact on very few practitioners and trademark
owners. Although the United States trademark bar (at least most
of it) applauded the holding of the case itself as a correct
interpretation of the Lanham Act, it got more than it bargained for
when the Supreme Court used Qualitex (probably for lack of
anything else) as the basis for the creation of judge-made rules on
more fundamental issues of distinctiveness and functionality. It is
in these areas of trademark law that the decision has had an
unintended, but fortunately relatively benign, impact.