Qualitex Co. v. Jacobson Products Co. Inc., [514 U.S. 159 (1995)]
FACTS:
- Qualitex Co. sold dry cleaning “press pads” in a striking green-gold colour to dry cleaning firms.
- Qualitex competitor Jacobson Products Co. began supplying comparable green-gold press pads to dry cleaners.
- Qualitex sued Jacobson in the United States District Court for unfair competition in 1989.
- Qualitex filed the green-gold colour of its press pads as a trademark with the United States Patent and Trademark Office in 1991.
- Qualitex then added a trademark infringement allegation to their lawsuit.
- A single colour can potentially meet the legal requirements for trademark registration under the Lanham Act if it has developed secondary meaning in the market, demonstrating that it meets the primary purpose of trademarks by identifying the source of a particular good. The functionality concept does not preclude the registration of colour as a trademark unless the colour is necessary to the use or purpose of the product or has a major impact on its cost or quality.
ISSUE:
- Whether or not the decision in Qualitex Co. v. Jacobson Products Co., Inc. established that a single colour can be registered as a trademark under the Lanham Act, how has this precedent influenced later colour trademark registrations?
- Whether the functionality concept, as established by the Court in Qualitex Co. v. Jacobson Products Co., Inc., constitutes a firm bar to registering a single colour as a trademark, or whether it is conditional on the specific circumstances and the impact of colour on product functionality?
HELD:
- The Ninth Circuit Court of Appeals first overturned the judgement, claiming that colour alone could not be registered as a trademark.
- In a unanimous judgement issued by Justice Breyer, the United States Supreme Court overturned the Ninth Circuit’s decision.
- The Lanham Act’s definition of trademarks, according to the Court, is broad and encompasses “any word, name, symbol, or device, or any combination thereof.”
- Colours can be descriptive trademarks if they gain secondary significance in the marketplace over time and serve the fundamental goal of trademarks by identifying the source of a certain product.
- The functionality concept does not preclude the registration of colour as a trademark unless the colour is necessary to the use or purpose of the product or has a major impact on it.