Qualitex Co. v. Jacobson Products Co.

AUTHOR: TIGLAO
514 US 159 (1995)
NOTES:
TOPIC: Trademarks | PONENTE: J. Breyer
CASE LAW/ DOCTRINE:
There is no objection to the use of color alone as a trademark, when that color has attained a secondary meaning and therefore
identifies and distinguishes a particular brand.
FACTS:
Qualitex is engaged in the dry cleaning business.
The dry cleaning pads, which it sold to its customers, used a distinct green and gold color.
Soon after, Jacobson Products, which is Qualitexs rival company, began selling pads of similar color. This resulted to
Qualitex filing an action for unfair competition against Jacobson.
Qualitex then registered its green-gold color with the Patent and Trademark Office.
Thereafter, Qualitex filed an action for infringement against Jacobson, challenging the use of the green-gold color.
DC: Ruled in favor of Qualitex.
CA: Reversed. According to the Court, the Lanham Act does not authorize Qualitex, or anyone else, to register color alone
as a trademark.
o Note: The Lanham Act gives a seller or producer the exclusive right to register a trademark and to prevent
competitors from using that trademark
Hence, this appeal.
ISSUE: W/N color can be registered as a trademark.
HELD: Yes. The Supreme Court ruled that the Lanham Act should be broadly construed. It must include within its scope almost
anything. The Court focuses on what the color represents and how it is viewed by consumers, rather than on its status as a
color.
RATIO:
The Lanham Act provides the definition of a trademark.
o Trademarks includes, any word, name, symbol, or device, or any combination thereof.
The Court reasoned that colors could constitute descriptive trademarks, because while colors do not automatically evoke
a connection to any product by themselves, they could take on secondary meaning over time, in the course of use in the
marketplace. In this way, a color could serve the chief purpose of trademarks, that of identifying the source of a particular
product.
There is no objection to the use of color as a mark under the functionality doctrine of trademark law. This doctrine
prevents trademark law from inhibiting legitimate competition by allowing a producer to control a useful product feature.
A patent may be given for a limited time over new designs or functions, but after it expires, competitors are free to use
the innovation. A product feature is functional if exclusive use of the feature would put competitors at a significant nonreputation-related disadvantage. Sometimes color does not play an essential role in the products use or purpose and
does not affect cost or quality, so the doctrine of functionality does not create an absolute bar to the use of color alone as
a mark.
Even color can sometimes meet the basic requirements for use as a trademark. It can be a symbol that distinguishes a

companys goods and identifies their source, without serving any other significant function.
When a color serves as a trademark, other colors will be available for similar use by competitors. If colors become scarce,
the functionality doctrine is available to prevent problems.
DISSENTING/CONCURRING OPINION(S):