HARTZ, Circuit Judge.
Plaintiff Forney Industries, Inc. (Forney) manufactures and sells a variety of products. Its largest product line is retail metalworking parts and accessories. The issue in this case is whether the use of colors in its packaging of that product line is a protected mark under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
Forney's packaging has, since at least 1989, used some combination of red, yellow, black, and white coloration. It describes the mark it seeks to protect as follows:
It has also provided five pictures of its packaging over the years, reproduced below with Forney's caption for each:
Aplt. Br. at 7-8.
Forney alleges that Defendant Daco of Missouri, Inc., which does business as KDAR Co. (KDAR), infringed on its protected mark by packaging KDAR's "Hot Max" products with similar colors and a flame motif. Forney offered examples of KDAR packaging compared to that of the competing Forney product, some of which are reproduced below:
Aplee. App. Vol. I at 21, 23.
The district court granted summary judgment to KDAR and we affirm. Forney's use of color, which was not associated with any particular shape, pattern, or design, was not adequately defined to be inherently distinctive, and Forney failed to produce sufficient evidence that its use of color in its line of products had acquired secondary meaning (that is, that the relevant public understood those colors to identify Forney as the source).
I. Legal Background
Passed in 1946 in an effort to prevent unfair competition in interstate commerce,
15 U.S.C. § 1127.
The Act's protection "embrace[s] not just word marks, such as `Nike,' and symbol marks, such as Nike's `swoosh' symbol, but also `trade dress,'" Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). We have defined trade dress as "an object's total image and overall appearance, [which] may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques."
The Lanham Act provides trademark protection under two separate sections. First, under § 2 of the Act, 15 U.S.C. § 1052, a party can seek protection of its trademark by registering it with the United States Patent and Trademark Office. See Wal-Mart Stores, 529 U.S. at 209, 120 S.Ct. 1339. This "entitles the owner to a presumption that its mark is valid." Id. "But the failure to register a [mark] does not preclude its protectability." Savant Homes, 809 F.3d at 1147. Unregistered marks are protected from infringement under § 43(a) of the Act, 15 U.S.C. § 1125. See Savant Homes, 809 F.3d at 1147.
To make out a claim under § 43(a) for an unregistered mark, the plaintiff must prove: (1) "[the] identifying mark ... is inherently distinctive or ... has acquired distinctiveness through secondary meaning," (2) the mark is nonfunctional, and (3) the competitor's alleged violation of the plaintiff's rights in its mark is likely to cause consumer confusion. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992); see Savant Homes, 809 F.3d at 1147 ("To obtain relief under § 43(a), a plaintiff must show: (1) The trade dress is inherently distinctive or has become distinctive through secondary meaning; (2) There is a likelihood of confusion among consumers as to the source of the competing products; and (3) The trade dress is nonfunctional." (internal quotation marks omitted)). As here, proving the first element is often the greatest hurdle. A mark is "inherently distinctive if its intrinsic nature serves to identify a particular source. Such [marks] almost automatically tell a customer that they refer to a brand and immediately signal a brand or a product
The law relating to whether a trademark is inherently distinctive is more developed for word marks than it is for trade dress. Courts have generally adopted the framework laid out in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), which separates word marks into five categories to assist in determining whether a mark is inherently distinctive: (1) fanciful, (2) arbitrary, (3) suggestive, (4) descriptive, or (5) generic. See id. at 9-11 & n.12. For instance, "Kodak" is an example of a "fanciful" mark because it was "invented solely for [its] use as [a] trademark." Id. at 11 n.12; see Wal-Mart Stores, 529 U.S. at 210, 120 S.Ct. 1339. "Camel" cigarettes is an example of an "arbitrary" mark since it is a "common word ... applied in an unfamiliar way." Abercrombie & Fitch Co., 537 F.2d at 11 n.12; see Wal-Mart Stores, 529 U.S. at 210, 120 S.Ct. 1339. And "Tide" laundry detergent might be said to be "suggestive," because even though it relates to the type of product at issue, "it requires imagination, thought and perception to reach a conclusion as to the nature of goods." Abercrombie & Fitch Co., 537 F.2d at 11 (internal quotation marks omitted); see Wal-Mart Stores, 529 U.S. at 210, 120 S.Ct. 1339. These three types of mark, "because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection." Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753. In contrast, "descriptive" marks — those that "forthwith convey an immediate idea of the ingredients, qualities or characteristics of the goods," Abercrombie & Fitch Co., 537 F.2d at 11 (internal quotation marks omitted); see Wal-Mart Stores, 529 U.S. at 213, 120 S.Ct. 1339 (giving "Tasty" bread and "Georgia" peaches as examples) — are not inherently distinctive, and therefore require proof of secondary meaning to be protected. See Two Pesos, 505 U.S. at 769, 112 S.Ct. 2753. Finally, words like "spoon" when used in connection with a spoon or "bowl" when used in connection with a bowl are "generic," because they "refer... to the genus of which the particular product is a species." Abercrombie & Fitch Co., 537 F.2d at 9; see id. at 10 n.11. Generic marks are not protectable under the Lanham Act. See Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753.
Whether a product's trade dress is inherently distinctive is not as straightforward. At one time the courts of appeals split on whether trade dress could ever be inherently distinctive. See Two Pesos, 505 U.S. at 767, 112 S.Ct. 2753. That split was resolved in Two Pesos, where the Supreme Court held that a product's trade dress, like other forms of trademark, could be protected under the Lanham Act by showing that it was inherently distinctive. See id. at 773-74, 112 S.Ct. 2753. But courts have struggled to come up with a test. See generally 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:13 (4th ed.) (McCarthy). Some have appropriated the Abercrombie framework, see id. and this court gives it careful consideration.
Although the Supreme Court has held that trade dress can be inherently distinctive, it has given little guidance on what is required. It has never adopted one of the above tests for inherently distinctive trade dress. See 1 McCarthy, supra, § 8:13 ("The Supreme Court [in Wal-Mart Stores] did not require use of the Abercrombie test for classifying packaging trade dress as either inherently distinctive or not."). The only time the Court has upheld a lower court's ruling that a trade dress was inherently distinctive was in Two Pesos, where it gave the following description of the trade dress for a chain of Mexican restaurants:
The Supreme Court has been more definitive in saying what kind of trade dress cannot be inherently distinctive. Since Two Pesos, the Court has twice carved out certain types of trade dress that by their nature could not be inherently distinctive and would therefore be protected only upon proof of secondary meaning. First, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995), the Court considered whether the green-gold color of dry-cleaning press pads was entitled to protection under the Lanham Act. See id. at 161, 115 S.Ct. 1300. Resolving a circuit split, the Court held that the Lanham Act "permits the registration of a trademark that consists, purely and simply, of a color." Id. at 160-61, 115 S.Ct. 1300. It said that "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," id. at 162-63, 115 S.Ct. 1300, but it could see no reason why a product's color should not be protected if it had acquired secondary meaning. See id. at 163-66, 115 S.Ct. 1300. Although, as Forney points out, the color at issue was the product's color, not the color of a package, nothing in the opinion suggests that the distinction matters.
Then in Wal-Mart the Court held that a product's design could not be inherently distinctive. 529 U.S. at 212, 120 S.Ct. 1339. In doing so the Court reaffirmed that "color is not inherently distinctive" (again making no distinction between color on a package or color of the product). Id. It explained, "The attribution of inherent distinctiveness to certain categories of word marks and product packaging derives from the fact that the very purpose of attaching a particular word to a product, or encasing it in a distinctive packaging, is most often to identify the source of the product." Id. But "[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." Id. at 213, 120 S.Ct. 1339. Most notably for our purposes, the Court emphasized the need for clear rules about what can be inherently distinctive:
Id.; see id. at 214, 120 S.Ct. 1339 ("Competition is deterred ... not merely by successful suit but by the plausible threat of successful suit...."). And the Court expressed "little confidence" that courts could articulate a clear test for inherently distinctive product design. See id. at 213-14, 120 S.Ct. 1339. In particular, addressing the government's proposed use of the Seabrook test as applied to product design, it said that "[s]uch a test would rarely provide the basis for summary disposition of an anticompetitive strike suit." Id. at 214, 120 S.Ct. 1339. "[G]iven the unlikelihood of inherently source-identifying design," the Court said, "the game of
In light of the Supreme Court's directive that a product's color cannot be inherently distinctive and its concern that inherent distinctiveness not be the subject of excessive litigation, we hold that the use of color in product packaging can be inherently distinctive (so that it is unnecessary to show secondary meaning) only if specific colors are used in combination with a well-defined shape, pattern, or other distinctive design. A review of the pertinent case law, both before and after Wal-Mart, indicates that our view is consistent with the practice of other courts.
We have found several cases in which color was a component of trade dress determined to be inherently distinctive. In each case, however, the color was used in combination with a shape, pattern, or other distinctive design. In Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 584 (2d Cir. 1993), the Second Circuit held that the packaging of a bottle of liqueur (No. 12 Ouzo) was inherently distinctive. The packaging consisted of a "clear glass bottle with a large label on its side and a second, smaller label on its neck." Id. at 581. The larger label had a white background outside a rectangle with a red bottom half and a white top half. See id. "No. 12" was written in black block lettering on the top half, with a small "No" and a large "12," "made to resemble a stencilled number on a crate or barrel." Id. "Ouzo" was printed in white block lettering on the bottom half. Id. The small label on the neck "mirror[ed] the large label in layout, except that a circle [was] used in place of the rectangle." Id. The court acknowledged that "[t]rade dresses often utilize commonly used lettering styles, geometric shapes, or colors, or incorporate descriptive elements," but said that that does not prevent the packaging from being inherently distinctive as a whole. Id. at 584. "While each of these elements individually would not be inherently distinctive, it is the combination of elements and the total impression that the dress gives to the observer that should be the focus of a court's analysis of distinctiveness." Id.
Similarly in AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 (11th Cir. 1986), the Eleventh Circuit affirmed a district court's finding that the packaging of a Klondike Bar was inherently distinctive. As in Paddington, the trade dress involved much more than just color. The packaging was square and brightly colored, had a pebbled texture, displayed images of a polar bear and a sunburst, and used a distinctive style of printing. See id. at 1536. "Both the polar bear and the sunburst [were] outlined and highlighted with royal blue. Below the bear [was] the word `Klondike,' written in
In Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 696 (5th Cir. 1981), the Fifth Circuit was presented with a trade-dress claim based on the packaging of "Ortho" lawn and garden products made by Chevron. The packaging had a precise template that designated the locations of each color, set the size and positioning of the lettering, and included a distinctive Chevron mark. The bottle was dark with a yellow cap. Id. at 697. The labelling's background was "composed of three horizontal bands of color; the top 20% [was] white, the next 30% [was] yellow, and the bottom 50% [was] red." Id. "ORTHO" was printed "on the white band in bold black letters, along with the distinctive chevron mark of the Chevron companies." Id. And on the label the product name, warnings, and other information uniformly appeared on specific bands. See id. The Fifth Circuit held that this combination of design elements was protectable without any showing of secondary meaning, saying:
Id. at 703 (emphasis added).
So too in McNeil Nutritionals, LLC v. Heartland Sweeteners LLC, 566 F.Supp.2d 378, 389 (E.D. Pa. 2008), where a district court held that the packaging of Splenda artificial sweetener was inherently distinctive. The Splenda packaging used a yellow, blue, and white color scheme. See id. at 390. But the trade dress was more than just color, and included a "combination of pictorial elements, colors, labeling, and layout (including the prominent placement of the product name surrounded by a distinctive white cloud)." Id. at 389. Parrying an objection that Splenda's trade dress could not be inherently distinctive because several of the elements, including the color scheme, were merely descriptive of the product or common in the industry, the court stated that it must "look at the overall combination of the pictorial elements and the other non-pictorial elements of the Splenda trade dress, such as the lettering styles, colors and layout of the Splenda packaging." Id. In light of the overall combination of elements, the court held that the packaging "identif[ies] the products as originating with the makers of Splenda," and was therefore inherently distinctive. Id.
Finally, in Letica Corp. v. Sweetheart Cup Co., 805 F.Supp. 482, 484 (E.D. Mich. 1992), a district court was presented with a trade-dress claim for the design on disposable drinking cups. The bottom half of the
None of these cases support the proposition that a color scheme or palette, in and of itself, can be inherently distinctive. Each looked to color in association with shapes and other patterns or designs.
In contrast, when courts have considered a color scheme or palette in isolation, the analysis has turned on whether the plaintiff has proved secondary meaning. In Board of Supervisors for Louisiana State University Agricultural and Mechanical. College. v. Smack Apparel Co., 550 F.3d 465, 471 (5th Cir. 2008), the Fifth Circuit considered whether the color schemes for several universities were protected under the Lanham Act. The court did not address inherent distinctiveness, agreeing with the parties "that a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional." Id. at 475. Ruling that the universities had established secondary meaning, the court held that the universities' color schemes were protectable trade dresses. See id. at 477; see also Univ. of Kansas v. Sinks, 644 F.Supp.2d 1287, 1295, 1297-98 (D. Kan. 2008) (analyzing University of Kansas color scheme for secondary meaning only because "[c]olors can never be inherently distinctive; they are only protectable if they have acquired secondary meaning"). Similarly, in Black & Decker Corp. v. Positec USA Inc., No. 11-CV-5426, 2015 WL 1543262, at *11 (N.D. Ill. Mar. 31, 2015), the district court dealt with a claim that "a yellow and black color combination" on power tools and packaging qualified for protection as trade dress. It focused only on secondary meaning, because "[a] color combination is not inherently distinctive but may have secondary meaning." Id. at *27 (citing Qualitex, 514 U.S. at 163, 115 S.Ct. 1300). And in Deere & Co. v. MTD Holdings Inc., No. 00 CIV. 5936 (LMM), 2003 WL 22439778 (S.D.N.Y. Oct. 28, 2003), the district court rejected a claim of inherently distinctive trade dress for "Deere's Green and Yellow trademarks and Deere's Green and Yellow Trade Dress as applied to its lawn and garden equipment in a specific and arbitrary manner, namely a green body or frame with yellow trim." Id. at *2 (internal quotation marks omitted). The court held that the mark was "still simply a combination of colors, which the Supreme Court has held can never be inherently distinctive." Id.
Leading secondary authorities seem to agree. McCarthy on Trademarks and Unfair Competition says, "After the Qualitex decision, whether color is confined to a defined design can determine whether inherent distinctiveness is a possible alternative to proving secondary meaning." 1 McCarthy, supra, § 7:45; cf. Restatement (Third) of Unfair Competition § 13 cmt. d at 108 (1995) (stating before Qualitex, "Color can be protected as an element of a trademark when used as part of a design,
II. Forney's Case
We turn now to Forney's case. Forney brought this action in the United States District Court for the District of Colorado claiming that packaging of KDAR's products infringed on Forney's trade dress under the Lanham Act and violated Colorado law. KDAR counterclaimed that Forney was infringing on KDAR's color mark, although in its summary-judgment pleadings it clarified that the counterclaim was to be considered only if the court found a likelihood of confusion between the parties' marks. The district court granted KDAR's motion for summary judgment on Forney's Lanham Act claims, dismissed KDAR's counterclaims as moot, and declined to exercise supplemental jurisdiction over Forney's state-law claims. Citing Qualitex and Wal-Mart, the district court held that Forney's mark could not be inherently distinctive because "the use of particular colors qualifies for protection only upon a showing of so-called `secondary,' or acquired meaning." Aplee. App. Vol. VI at 546. It then held that Forney offered insufficient proof of secondary meaning to withstand summary judgment. Forney appeals both holdings.
"We review the district court's grant of summary judgment de novo, applying the same standards that the district court should have applied." Merrifield v. Bd. of Cnty. Comm'rs for Cnty. of Santa Fe, 654 F.3d 1073, 1077 (10th Cir. 2011) (internal quotation marks omitted). In doing so, "[w]e examine the record and all reasonable inferences that might be drawn from it in the light most favorable to the non-moving party." Id. (internal quotation marks omitted). We will affirm a grant of summary judgment if "there is no genuine issue as to any material fact and the movant is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(a).
A. Inherent Distinctiveness
Our examination of Forney's argument that its trade dress is inherently distinctive begins with Forney's description of the packaging for its product line. In its brief to us, Forney defines its trade dress as follows:
Aplt. Br. at 6 (record citations omitted). A substantially identical description was given in district court through an affidavit by Forney President and Chief Executive Officer (CEO) Steven Anderson.
In any event, Forney's description is too vague to satisfy our requirement that the color scheme be used in combination with a well-defined shape, pattern, or other distinctive design. For example, Forney says that the yellow "typically" begins higher than red. Lettering and accents "may" be red, yellow, white, or black. This failure in the description cannot be blamed on any shortcoming in counsel's power of expression. It is probably the best that one could do, given the variety of packaging that Forney has used on its products over the years. What once was packaging consisting of a bright-yellow oval surrounded by a red background topped by black and yellow bars with yellow and black lettering, see Fig. 1, eventually became a red-fade-into-yellow-fade-into-red background with a black bar and white lettering, see Fig. 4, and finally ended up as a yellow-fade-into-red
In short, Forney has used the combination of red, yellow, white, and black in such diverse ways that there is no consistent shape, pattern, or design we can discern from its description of its mark or from the examples it provides. Particularly in light of the Supreme Court's instruction to be cautious about applying vague, litigation-friendly tests for inherent distinctiveness, we conclude that Forney has failed to establish an inherently distinctive trade dress.
We therefore turn to the evidence of secondary meaning. Trade dress is said to have developed secondary meaning "when in the minds of the public, the primary significance of the mark is to identify the source of the product rather than the product itself." Wal-Mart Stores, 529 U.S. at 211, 120 S.Ct. 1339 (brackets and internal quotation marks omitted). Forney has the burden of persuasion on the issue. See Savant Homes, 809 F.3d at 1150 ("Because Savant failed to raise a fact issue as to inherent distinctiveness or secondary meaning, it failed to satisfy its summary judgment burden on its trade dress claim."); PaperCutter, Inc. v. Fay's Drug Co., 900 F.2d 558, 564 (2d Cir. 1990) ("The existence of secondary meaning is a question of fact with the burden of proof on the party claiming exclusive rights in the designation."). Secondary meaning can be established through "direct evidence, such as consumer surveys or testimony from consumers." Donchez v. Coors Brewing Co., 392 F.3d 1211, 1218 (10th Cir. 2004) (internal quotation marks omitted). But a plaintiff can also rely on circumstantial evidence, such as:
Savant Homes, 809 F.3d at 1148 (citations omitted).
Forney does not point to any direct evidence of secondary meaning but does list three items from an affidavit by CEO Steven Anderson that it argues meet its burden:
Aplt. Br. at 31.
We agree that advertising can be strongly probative. For instance, in In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985), one of the preeminent trade-dress-color cases, the court looked to advertising that highlighted the pink color of the product. See id. at 1126-27. Owens-Corning had used the Pink Panther in commercials that told consumers that they "can cut the high cost of fuel if they would only `[a]dd another layer of pink' in their attics." Id. at 1126. And it had slogans in its advertising such as: "Pink of Perfection"; "The Pink Cooler"; "Big Pink"; "Love that Pink"; "Pink Power";
But advertising alone is typically unhelpful to prove secondary meaning when it is not directed at highlighting the trade dress. See 1 McCarthy, supra, § 8:8 ("[S]econdary meaning cannot usually be proven by advertising that merely pictures the claimed trade dress and does nothing to emphasize it or call attention to it."); Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1146 (9th Cir. 2009) ("To demonstrate secondary meaning based on advertising, the advertising must be of a nature and extent to create an association [of the trade dress] with the advertiser's goods." (internal quotation marks omitted)). And here the district court found that Forney's advertising "utterly fails to mention the Color Mark, or to emphasize it in any fashion." Aplee. App. Vol. VI at 550. On appeal Forney does nothing to challenge that characterization or otherwise show how the advertising was directed at highlighting its trade dress.
Forney's evidence of sales data is similarly unavailing. It provides total sales volume but gives no indication of how those sales relate to the color mark. See Savant Homes, 809 F.3d at 1148 ("Sales volume... only suggests secondary meaning when presented in conjunction with other evidence; standing alone, sales volume may not be indicative of secondary meaning because it could be related to factors other than source identification." (brackets and internal quotation marks omitted)); Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136, 1154-55 (10th Cir. 2013) ("Evidence that its products had millions of users and that its products were sold through well-known retailers does not tell us whether the sales were stimulated by the mark.").
Finally, Forney points to CEO Anderson's testimony that Forney was the exclusive user of the trade dress for 20 years. True, exclusive use of a trade dress over a great length of time may support a finding of secondary meaning. But Forney has failed to make a sufficient showing of exclusive use to survive summary judgment. First, Anderson's statements are conclusory. See L & M Enterprises, Inc. v. BEI Sensors & Sys. Co., 231 F.3d 1284, 1287 (10th Cir. 2000) ("Unsupported conclusory allegations ... do not create a genuine issue of fact."); Gimix, Inc. v. JS & A Grp., Inc., 699 F.2d 901, 907 (7th Cir. 1983) (affidavit alleging that trademark was well-known was "conclusory in nature and did not adequately place the question of secondary meaning to consumers in issue"). Anderson does not even clearly assert that Forney's use of color was unique, stating merely that "Forney's extensive promotion, advertising and sales of Forney Retail Metalworking products bearing the Forney Color Mark were uncontested, extensive and exclusive for 20 years," Aplee. App. Vol. V at 470, and providing pictures of four packages from its "primary" competitors that use different colors, Aplt. Br. at 12. The limited probativeness of those four examples is demonstrated by several pictures offered by KDAR showing product packages in the retail-metalworking sector that bear a close resemblance to Forney's product packaging.
Because Forney points to no other evidence that would permit a rational fact-finder to hold that its trade dress has acquired secondary meaning, we agree with the district court that KDAR was entitled to summary judgment.
We AFFIRM the district court's judgment.
Aplee. App. Vol. V at 464-65.