UNITED STATES: Federal Circuit Adopts Test for Whether Color Marks Are Generic

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit adopted the test enunciated by the Trademark Trial and Appeal Board (Board) to determine whether color marks are generic. See In re: PT Medisafe Technologies, No. 2023-1573. The court then applied that test to affirm the Board’s decision that the color mark proposed by applicant PT Medisafe Technologies (Medisafe) was generic and therefore ineligible for registration. Medisafe, a manufacturer and distributor of medical gloves, had applied for registration of the color dark green as applied to chloroprene medical examination gloves.

The examiner rejected the application, finding that the proposed mark was generic and had not acquired distinctiveness. Medisafe appealed to the Board, which affirmed, and then appealed to the Federal Circuit.

The Federal Circuit determined that the Board had applied the correct test for whether color marks are generic. The Board’s two-step inquiry is a variation of the test used to determine whether word marks are generic. The first step is to identify the genus of goods or services at issue. The second step is to determine whether the color sought to be registered is understood by the relevant public primarily as a type of trade dress for the genus of goods or services identified in the first step.

Applying this test to the facts before it, the court found, in its April 29, 2025, decision, substantial evidence to support the Board’s determination that Medisafe’s proposed mark was generic. Applying the first step, the Board identified the genus of goods at issue as chloroprene medical examination gloves. At the second step, there was substantial evidence that Medisafe’s proposed color mark was so common in the chloroprene medical examination glove industry that it could not identify a single source, such that it is generic. Such evidence included screenshots of third-party websites offering chloroprene medical examination gloves—unaffiliated with Medisafe—in the same color as in the proposed mark. Having found the mark generic, the court further found that the mark could not have acquired distinctiveness.

Following the decision in Medisafe, applicants for color marks should be prepared to address each element of the test for whether such marks are generic and to prove that their proposed marks are not understood by the relevant public primarily as a type of trade dress.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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