Fildes & Outland, P.C.

Notice of Proposed Rulemaking in Trademark Matters

In the case of In re Forney Industries​​ (127 U.S.P.Q.2d 1787 (TTAB 2018))​, the TTAB found that a mark consisting of multiple colors without additional elements is legally the same as a mark consisting of a single color.  Therefore, the TTAB held that a color mark consisting of colors applied to product packaging cannot be inherently distinctive, and acquired distinctiveness must be shown for the mark to be registered on the Principal Register.  The TTAB also suggested that the outcome may have been different if the specific colors were used in combination with a well-defined shape, pattern, or other distinctive design.

A copy of the Forney Industries decision may be accessed at http://ttabvue.uspto.gov/ttabvue/ttabvue-86269096-EXA-19.pdf.

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On February 15, 2019, the USPTO published a Notice of Proposed Rulemaking to amend the trademark rules to require that foreign applicants, registrants, or parties to a proceeding before the TTAB be represented by a U.S. attorney.  A foreign applicant, registrant, or party would be defined as one whose domicile or principal place of business is not located within the U.S. or its territories.  The USPTO indicated that such a rule would improve the integrity of the U.S. trademark register and would better enforce compliance with U.S. statutory and regulatory requirements.  The USPTO also noted that the proposed requirement is similar to the requirement that currently exists in many other countries.

Public comments on the proposed changes to the trademark rules are due by March 18, 2019.

A copy of the Federal Register Notice may be accessed at https://www.govinfo.gov/content/pkg/FR-2019-02-15/pdf/2019-02154.pdf.

In re Forney Industries, Inc.:  Multiple-color Marks

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