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QUALITEX CO. v. JACOBSON PRODUCTS CO., INC |
Docket 93-1577 -- Decided March 28, 1995
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Petitioner Qualitex Company has for years colored the dry
cleaning press pads it manufactures with a special shade of
green-gold. After respondent Jacobson Products (a Qualitex
rival) began to use a similar shade on its own press pads,
Qualitex registered its color as a trademark and added a
trademark infringement count to the suit it had previously filed
challenging Jacobson's use of the greengold color. Qualitex won
in the District Court, but the Ninth Circuit set aside the
judgment on the infringement claim because, in its view, the
Lanham Trademark Act of 1946 does not permit registration of
color alone as a trademark.
Held:
The Lanham Act permits the registration of a trademark that
consists, purely and simply, of a color. Pp. 2-15.
(a) That color alone can meet the basic legal requirements for
use as a trademark is demonstrated both by the language of the
Act, which describes the universe of things that can qualify as
a trademark in the broadest of terms, 15 U.S.C. 1127, and by the
underlying principles of trademark law, including the
requirements that the mark "identify and distinguish [the
seller's] goods . . . from those manufactured or sold by others
and to indicate [their] source," ibid., and that it not be
"functional," see, e.g., Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 850, n. 10. The District
Court's findings (accepted by the Ninth Circuit and here
undisputed) show Qualitex's green-gold color has met these
requirements. It acts as a symbol. Because customers identify
the color as Qualitex's, it has developed secondary meaning,
see, e.g., id., at 851, n. 11, and thereby identifies the press
pads' source. And, the color serves no other function.
(Although it is important to use some color on press pads to
avoid noticeable stains, the court found no competitive need in
the industry for the green-gold color, since other colors are
equally usable.) Accordingly, unless there is some special
reason that convincingly militates against the use of color
alone as a trademark, trademark law protects Qualitex's use of
its green-gold color. Pp. 2-7.
(b) Jacobson's various special reasons why the law should forbid
the use of color alone as a trademark-that a contrary holding
(1) will produce uncertainty and unresolvable court disputes
about what shades of a color a competitor may lawfully use; (2)
is unworkable in light of the limited supply of colors that will
soon be depleted by competitors; (3) is contradicted by many
older cases, including decisions of this Court interpreting pre-
Lanham Act trademark law; and (4) is unnecessary because firms
already may use color as part of a trademark and may rely on
"trade dress" protection-are unpersuasive. Pp. 7-15.
13 F.3d 1297, reversed.
Breyer, J., delivered the opinion for a unanimous Court.
