Qualitex Co. v. Jacobson Products Co., Inc.

Brief Fact Summary. Qualitex Co. (Plaintiff) sought to register a trademark on a color.

Synopsis of Rule of Law. Color on its own may be registered as a trademark.

Facts. Qualitex Co. (Plaintiff) manufactured and sold pads used by dry cleaners on their presses. The pads made by Plaintiff were of a distinctive green-gold color. When Plaintiff discovered that Jacobson Products Co. (Defendant) was also selling pads of the same color, it brought an unfair competition action and also sought to register the color as a trademark. The district court held Defendant to be in violation of Plaintiff’s trademark. The Ninth Circuit Court of Appeals reversed, holding that color alone could not be registered as a trademark. The United States Supreme Court accepted review.

Issue. May color on its own be registered as a trademark?

Held. (Breyer, J.) Yes. Color on its own may be registered as a trademark. The Lanham Act, which establishes federal trademark law, is quite liberal in regards to the universe of things that can be trademarked. Any symbol that carries a secondary meaning linking it with a particular product may be trademarked. There seems to be no reason why a color cannot fall within this definition. Defendant’s arguments to the contrary are mostly based on pre-Lanham Act common law. Defendant also argues that since an infinite number of colors exist, color should not be trademarked. To establish a blanket prohibition for a problem that rarely occurs is unnecessary. Reversed.

Discussion. A number of things of tenuous tangibility have become trademarks: a bottle shape (Coca-Cola) and sound (NBC Broadcasting Co.). It would follow that allowing color to be the subject of a trademark is not unusual.