1202.05(i) Color Marks in §44 or §66(a) Applications
A color mark can never be inherently distinctive. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-12, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162-63, 34 USPQ2d 1161, 1162-63 (1995)); TMEP §1202.05(a). But see In re Forney Indus., Inc., 955 F.3d 940, 945, 2020 USPQ2d 10310, at *3 (Fed. Cir. 2020) (a multiple-color mark used on product packaging may be inherently distinctive, depending on the character of the color design); TMEP §§1202.02(b)(ii); 1205.05(a). Generally, the examining attorney must refuse to register a proposed color mark on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness under §2(f). The ground for refusal is that the color is not inherently distinctive and, thus, does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, or does not function as a service mark under §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127.
If the record indicates that the proposed mark is functional, the examining attorney should issue a refusal of registration on the Principal Register under §2(f), or on the Supplemental Register. See TMEP §§1202.02(e), 1202.03(e), 1202.05(b). However, a mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).