IN RE: PT MEDISAFE TECHNOLOGIES
Before Prost, Clevenger, and Stark. Appeal from the Trademark Trial and Appeal Board.
Summary: A proposed color mark was found generic where the relevant public perceived the color to be a common trade dress for the relevant genus of goods.
Medisafe filed a trademark application for a color mark – the color dark green (Pantone 3285 c) – for medical examination gloves. The PTO rejected the application for lack of inherent distinctiveness. In its responses, Medisafe presented evidence to support its claim that its proposed mark had acquired distinctiveness. The PTO disagreed and issued a final refusal finding the proposed mark was generic and had not acquired distinctiveness. Medisafe appealed to the Trademark Trial and Appeal Board.
The Board affirmed. In assessing whether Medisafe’s proposed mark was generic, the Board applied the two-step Milwaukee test. Under the first step, the Board defined the genus of goods at issue as chloroprene medical examination gloves. It rejected Medisafe’s proposed narrower genus limited to such gloves sold to authorized resellers. The Board cited screenshots of websites selling, under third-party marks, chloroprene/neoprene medical examination gloves in “the same or nearly the same dark green color” as gloves sold under the proposed mark. Under the second step, the Board found that the relevant public primarily understood the color sought to be registered as a category or type of trade dress for that genus. The Board concluded the dark green color was so commonly applied to chloroprene medical examination gloves that consumers could encounter gloves in the same or nearly identical color without identifying Medisafe as the source or manufacturer. Medisafe appealed to the Federal Circuit.
The Federal Circuit also affirmed. It agreed the two-step Milwaukee test is appropriate for assessing whether a color mark is generic and adopted that test. Under the first step, the Court found substantial evidence supported the Board’s identification of the genus of goods at issue as chloroprene medical examination gloves. It found no error in rejecting Medisafe’s proposal to narrow that genus to gloves sold to authorized resellers, stating the Board was right not to limit the universe of subject gloves to Medisafe’s own products. The Court also noted Medisafe’s initial trademark application identified the subject goods as “[m]edical examination gloves.” Under the second step, the Court found substantial evidence supported the Board’s finding that Medisafe’s proposed mark was so common in the industry that it could not identify a single source and was, therefore, generic. The Federal Circuit cited evidence of other sellers of chloroprene/neoprene medical examination gloves in “the same or nearly the same dark green color” as in the proposed mark. Thus, the Court affirmed the Board’s determination that Medisafe’s proposed mark was generic and, hence, ineligible for registry on either the principal or supplemental registers.
Editor: Sean Murray
