U.S. Supreme Court
Qualitex Co. v. Jacobson Products Co.
514 U.S. 159
1995
Justice
Breyer, delivered the opinion of the Court.
The
question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U.
S. C. §§ 1051-1127 (1988 ed. and Supp. V), permits the registration of a
trademark that consists, purely and simply, of a color. We conclude that,
sometimes, a color will meet ordinary legal trademark requirements. And, when
it does so, no special legal rule prevents color alone from serving as a
trademark.
I
The case
before us grows out of petitioner Qualitex Company's use (since the 1950's) of
a special shade of green-gold color on the pads that it makes and sells to dry
cleaning firms for use on dry cleaning presses. In 1989, respondent Jacobson
Products (a Qualitex rival) began to sell its own press pads to dry cleaning
firms; and it colored those pads a similar green gold. In 1991, Qualitex registered
the special greengold color on press pads with the Patent and Trademark Office
as a trademark. Registration No. 1,633,711 (Feb. 5, 1991). Qualitex
subsequently added a trademark infringement count, 15 U. S. C. § 1114(1), to an
unfair competition claim, § 1125(a), in a lawsuit it had already filed
challenging Jacobson's use of the green-gold color.
Qualitex
won the lawsuit in the District Court. 21 U. S. P. Q. 2d 1457 (CD Cal. 1991).
But, the Court of Appeals for the Ninth Circuit set aside the judgment in
Qualitex's favor on the trademark infringement claim because, in that Circuit's
view, the Lanham Act does not permit Qualitex, or anyone else, to register
"color alone" as a trademark. 13 F. 3d 1297, 1300, 1302 (1994).
The
Courts of Appeals have differed as to whether or not the law recognizes the use
of color alone as a trademark. Compare NutraSweet Co. v. Stadt
Corp., 917 F. 2d 1024, 1028 (CA7 1990) (absolute prohibition
against protection of color alone), with In re Owens-Corning Fiberglas
Corp., 774 F. 2d 1116, 1128 (CA Fed. 1985) (allowing registration
of color pink for fiberglass insulation), and Master Distributors, Inc. v. Pako
Corp., 986 F. 2d 219, 224 (CA8 1993) (declining to
establish per se prohibition against protecting color alone as
a trademark). Therefore, this Court granted certiorari. 512 U. S. 1287
(1994). We now hold that there is no rule absolutely barring the use of color
alone, and we reverse the judgment of the Ninth Circuit.
II
The
Lanham Act gives a seller or producer the exclusive right to
"register" a trademark, 15 U. S. C. § 1052 (1988 ed. and Supp. V),
and to prevent his or her competitors from using that trademark, § 1114(1).
Both the language of the Act and the basic underlying principles of trademark
law would seem to include color within the universe of things that can qualify
as a trademark. The language of the Lanham Act describes that universe in the
broadest of terms. It says that trademarks "includ[e] any word, name,
symbol, or device, or any combination thereof." § 1127. Since human beings
might use as a "symbol" or "device" almost anything at all
that is capable of carrying meaning, this language, read literally, is not
restrictive. The courts and the Patent and Trademark Office have authorized for
use as a mark a particular shape (of a Coca-Cola bottle), a particular sound
(of NBC's three chimes), and even a particular scent (of plumeria blossoms on
sewing thread). See, e. g., Registration No. 696,147 (Apr. 12,
1960); Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July 13,
1971); In re Clarke, 17 U. S. P. Q. 2d 1238, 1240 (TTAB 1990).
If a shape, a sound, and a fragrance can act as symbols why, one might ask, can
a color not do the same?
A color
is also capable of satisfying the more important part of the statutory
definition of a trademark, which requires that a person "us[e]" or
"inten[d] to use" the mark
"to
identify and distinguish his or her goods, including a unique product, from
those manufactured or sold by others and to indicate the source of the goods,
even if that source is unknown." 15 U. S. C. § 1127.
True, a
product's color is unlike "fanciful," "arbitrary," or
"suggestive" words or designs, which almost automatically tell
a customer that they refer to a brand. Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F. 2d 4, 9-10 (CA2 1976) (Friendly, J.); see Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763, 768
(1992). The imaginary word "Suntost," or the words "Suntost
Marmalade," on a jar of orange jam immediately would signal a brand or a
product "source"; the jam's orange color does not do so. But, over
time, customers may come to treat a particular color on a product or its
packaging (say, a color that in context seems unusual, such as pink on a firm's
insulating material or red on the head of a large industrial bolt) as
signifying a brand. And, if so, that color would have come to identify and
distinguish the goods—i. e., "to indicate" their
"source"—much in the way that descriptive words on a product (say,
"Trim" on nail clippers or "Car-Freshner" on deodorizer)
can come to indicate a product's origin. See, e. g., J. Wiss &
Sons Co. v. W. E. Bassett Co., 59 C. C. P. A. 1269,
1271 (Pat.), 462 F. 2d 567, 569 (1972); Car-Freshner Corp. v. Turtle
Wax, Inc., 268 F. Supp. 162, 164 (SDNY 1967). In this circumstance,
trademark law says that the word (e. g., "Trim"),
although not inherently distinctive, has developed "secondary
meaning." See Inwood Laboratories, Inc. v. Ives
Laboratories, Inc., 456 U. S. 844, 851, n. 11
(1982) ("[S]econdary meaning" is acquired when "in the
minds of the public, the primary significance of a product feature . . . is to
identify the source of the product rather than the product itself").
Again, one might ask, if trademark law permits a descriptive word with
secondary meaning to act as a mark, why would it not permit a color, under
similar circumstances, to do the same?
We cannot
find in the basic objectives of trademark law any obvious theoretical objection
to the use of color alone as a trademark, where that color has attained
"secondary meaning" and therefore identifies and distinguishes a
particular brand (and thus indicates its "source"). In principle,
trademark law, by preventing others from copying a sourceidentifying mark,
"reduce[s] the customer's costs of shopping and making purchasing
decisions," 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition §
2.01[2], p. 2-3 (3d ed. 1994) (hereinafter McCarthy), for it quickly and easily
assures a potential customer that this item—the item with this
mark—is made by the same producer as other similarly marked items that he or
she liked (or disliked) in the past. At the same time, the law helps assure a
producer that it (and not an imitating competitor) will reap the financial,
reputation-related rewards associated with a desirable product. The law thereby
"encourage[s] the production of quality products," ibid., and
simultaneously discourages those who hope to sell inferior products by
capitalizing on a consumer's inability quickly to evaluate the quality of an item
offered for sale. See, e. g., 3 L. Altman, Callmann on Unfair
Competition, Trademarks and Monopolies § 17.03 (4th ed. 1983); Landes &
Posner, The Economics of Trademark Law, 78 T. M. Rep. 267, 271-272
(1988); Park `N Fly, Inc. v. Dollar Park & Fly,
Inc., 469 U. S. 189, 198 (1985); S. Rep. No. 100— 515, p. 4 (1988). It
is the source-distinguishing ability of a mark—not its ontological status as
color, shape, fragrance, word, or sign—that permits it to serve these basic
purposes. See Landes & Posner, Trademark Law: An Economic Perspective, 30
J. Law & Econ. 265, 290 (1987). And, for that reason, it is difficult to
find, in basic trademark objectives, a reason to disqualify absolutely the use
of a color as a mark.
Neither
can we find a principled objection to the use of color as a mark in the
important "functionality" doctrine of trademark law. The
functionality doctrine prevents trademark law, which seeks to promote
competition by protecting a firm's reputation, from instead inhibiting legitimate
competition by allowing a producer to control a useful product feature. It is
the province of patent law, not trademark law, to encourage invention by
granting inventors a monopoly over new product designs or functions for a
limited time, 35 U. S. C. §§ 154, 173, after which competitors are free to use
the innovation. If a product's functional features could be used as
trademarks, however, a monopoly over such features could be obtained without
regard to whether they qualify as patents and could be extended forever (because
trademarks may be renewed in perpetuity). See Kellogg Co. v. National
Biscuit Co., 305 U. S. 111, 119-120 (1938) (Brandeis, J.);Inwood
Laboratories, Inc., supra, at 863 (White, J., concurring in
result) ("A functional characteristic is `an important ingredient in the
commercial success of the product,' and, after expiration of a patent, it is no
more the property of the originator than the product itself") (citation
omitted). Functionality doctrine therefore would require, to take an imaginary
example, that even if customers have come to identify the special
illumination-enhancing shape of a new patented light bulb with a particular
manufacturer, the manufacturer may not use that shape as a trademark, for doing
so, after the patent had expired, would impede competition—not by protecting
the reputation of the original bulb maker, but by frustrating competitors'
legitimate efforts to produce an equivalent illumination-enhancing bulb.
See, e. g., Kellogg Co., supra, at
119-120 (trademark law cannot be used to extend monopoly over
"pillow" shape of shredded wheat biscuit after the patent for that
shape had expired). This Court consequently has explained that, "[i]n
general terms, a product feature is functional," and cannot serve as a
trademark, "if it is essential to the use or purpose of the article or if
it affects the cost or quality of the article," that is, if exclusive use
of the feature would put competitors at a significant non-reputation-related
disadvantage. Inwood Laboratories, Inc., supra, at 850, n. 10.
Although sometimes color plays an important role (unrelated to source
identification) in making a product more desirable, sometimes it does not. And,
this latter fact—the fact that sometimes color is not essential to a product's
use or purpose and does not affect cost or quality—indicates that the doctrine
of "functionality" does not create an absolute bar to the use of
color alone as a mark. See Owens-Corning, 774 F. 2d, at
1123 (pink color of insulation in wall "performs no non-trademark
function").
It would
seem, then, that color alone, at least sometimes, can meet the basic legal
requirements for use as a trademark. It can act as a symbol that distinguishes
a firm's goods and identifies their source, without serving any other
significant function. See U. S. Dept. of Commerce, Patent and Trademark Office,
Trademark Manual of Examining Procedure § 1202.04(e), p. 1202-13 (2d ed. May,
1993) (hereinafter PTO Manual) (approving trademark registration of color alone
where it "has become distinctive of the applicant's goods in
commerce," provided that "there is [no] competitive need for colors
to remain available in the industry" and the color is not
"functional"); see also 1 McCarthy §§ 3.01[1], 7.26, pp. 3-2, 7-113
("requirements for qualification of a word or symbol as a trademark"
are that it be (1) a "symbol," (2) "use[d] . . . as a
mark," (3) "to identify and distinguish the seller's goods from goods
made or sold by others," but that it not be "functional").
Indeed, the District Court, in this case, entered findings (accepted by the
Ninth Circuit) that show Qualitex's green-gold press pad color has met these
requirements. The green-gold color acts as a symbol. Having developed secondary
meaning (for customers identified the green-gold color as Qualitex's), it
identifies the press pads' source. And, the green-gold color serves no other
function. (Although it is important to use some color on press
pads to avoid noticeable stains, the court found "no competitive need in
the press pad industry for the green-gold color, since other colors are equally
usable." 21 U. S. P. Q. 2d, at 1460.) Accordingly, unless there is some
special reason that convincingly militates against the use of color alone as a
trademark, trademark law would protect Qualitex's use of the green-gold color
on its press pads.
III
Respondent
Jacobson Products says that there are four special reasons why the law should
forbid the use of color alone as a trademark. We shall explain, in turn,
why we, ultimately, find them unpersuasive.
First, Jacobson says that, if the law permits the use of
color as a trademark, it will produce uncertainty and unresolvable court
disputes about what shades of a color a competitor may lawfully use. Because
lighting (morning sun, twilight mist) will affect perceptions of protected
color, competitors and courts will suffer from "shade confusion" as
they try to decide whether use of a similar color on a similar product does, or
does not, confuse customers and thereby infringe a trademark. Jacobson adds
that the "shade confusion" problem is "more difficult" and
"far different from" the "determination of the similarity of
words or symbols." Brief for Respondent 22.
We do not
believe, however, that color, in this respect, is special. Courts traditionally
decide quite difficult questions about whether two words or phrases or symbols
are sufficiently similar, in context, to confuse buyers. They have had to
compare, for example, such words as "Bonamine" and
"Dramamine" (motion-sickness remedies); "Huggies" and
"Dougies" (diapers); "Cheracol" and "Syrocol"
(cough syrup); "Cyclone" and "Tornado" (wire fences); and
"Mattres" and "1-800—Mattres" (mattress franchisor
telephone numbers). See, e. g., G. D. Searle & Co. v. Chas.
Pfizer & Co., 265 F. 2d 385, 389 (CA7 1959); Kimberly-Clark
Corp. v. H. Douglas Enterprises, Ltd., 774 F. 2d
1144, 1146-1147 (CA Fed. 1985); Upjohn Co. v. Schwartz, 246
F. 2d 254, 262 (CA2 1957); Hancock v. American Steel
& Wire Co. of N. J., 40 C. C. P. A. (Pat.) 931, 935, 203 F. 2d
737, 740-741 (1953); Dial-AMattress Franchise Corp. v. Page, 880
F. 2d 675, 678 (CA2 1989). Legal standards exist to guide courts in making such
comparisons. See, e. g., 2 McCarthy § 15.08; 1 McCarthy §§
11.24-11.25 ("[S]trong" marks, with greater secondary meaning, receive
broader protection than "weak" marks). We do not see why courts could
not apply those standards to a color, replicating, if necessary, lighting
conditions under which a colored product is normally sold. See Ebert,
Trademark Protection in Color: Do It By the Numbers!, 84 T. M. Rep. 379, 405
(1994). Indeed, courts already have done so in cases where a trademark consists
of a color plus a design, i. e., a colored symbol such as a
gold stripe (around a sewer pipe), a yellow strand of wire rope, or a
"brilliant yellow" band (on ampules). See, e.
g., Youngstown Sheet & Tube Co. v. Tallman Conduit
Co., 149 U. S. P. Q. 656, 657 (TTAB 1966); Amstead Industries,
Inc. v. West Coast Wire Rope & Rigging Inc., 2 U.
S. P. Q. 2d 1755, 1760 (TTAB 1987); In re Hodes-Lange Corp., 167
U. S. P. Q. 255, 256 (TTAB 1970).
Second, Jacobson argues, as have others, that colors are in
limited supply. See, e. g., NutraSweet Co., 917 F. 2d, at
1028; Campbell Soup Co. v. Armour & Co., 175
F. 2d 795, 798 (CA3 1949). Jacobson claims that, if one of many competitors can
appropriate a particular color for use as a trademark, and each competitor then
tries to do the same, the supply of colors will soon be depleted. Put in its
strongest form, this argument would concede that "[h]undreds of color
pigments are manufactured and thousands of colors can be obtained by
mixing." L. Cheskin, Colors: What They Can Do For You 47 (1947). But, it
would add that, in the context of a particular product, only some colors are
usable. By the time one discards colors that, say, for reasons of customer
appeal, are not usable, and adds the shades that competitors cannot use lest
they risk infringing a similar, registered shade, then one is left with only a
handful of possible colors. And, under these circumstances, to permit one, or a
few, producers to use colors as trademarks will "deplete" the supply
of usable colors to the point where a competitor's inability to find a suitable
color will put that competitor at a significant disadvantage.
This
argument is unpersuasive, however, largely because it relies on an occasional
problem to justify a blanket prohibition. When a color serves as a mark,
normally alternative colors will likely be available for similar use by others.
See, e. g., Owens-Corning, 774 F. 2d, at 1121 (pink
insulation). Moreover, if that is not so—if a "color depletion"
or "color scarcity" problem does arise—the trademark doctrine of
"functionality" normally would seem available to prevent the anti
competitive consequences that Jacobson's argument posits, thereby minimizing
that argument's practical force.
The
functionality doctrine, as we have said, forbids the use of a product's feature
as a trademark where doing so will put a competitor at a significant
disadvantage because the feature is "essential to the use or purpose of
the article" or "affects [its] cost or quality." Inwood
Laboratories, Inc., 456 U. S., at 850, n. 10. The functionality
doctrine thus protects competitors against a disadvantage (unrelated to
recognition or reputation) that trademark protection might otherwise impose,
namely, their inability reasonably to replicate important
non-reputation-related product features. For example, this Court has written
that competitors might be free to copy the color of a medical pill where that color
serves to identify the kind of medication (e. g., a type of blood
medicine) in addition to its source. See id., at 853, 858, n.
20 ("[S]ome patients commingle medications in a container and rely on
color to differentiate one from another"); see also J. Ginsburg, D.
Goldberg, & A. Greenbaum, Trademark and Unfair Competition Law 194-195
(1991) (noting that drug color cases "have more to do with public health
policy" regarding generic drug substitution "than with trademark
law"). And, the federal courts have demonstrated that they can apply this
doctrine in a careful and reasoned manner, with sensitivity to the effect on
competition. Although we need not comment on the merits of specific cases, we
note that lower courts have permitted competitors to copy the green color of
farm machinery (because customers wanted their farm equipment to match) and
have barred the use of black as a trademark on outboard boat motors (because
black has the special functional attributes of decreasing the apparent size of
the motor and ensuring compatibility with many different boat colors).
See Deere & Co. v. Farmhand, Inc., 560 F.
Supp. 85, 98 (SD Iowa 1982), aff'd, 721 F. 2d 253 (CA8 1983); Brunswick
Corp. v. British Seagull Ltd., 35 F. 3d 1527, 1532
(CA Fed. 1994), cert. pending, No. 94-1075; see also Nor-Am
Chemical v. O. M. Scott & Sons Co., 4 U. S. P. Q.
2d 1316, 1320 (ED Pa. 1987) (blue color of fertilizer held functional
because it indicated the presence of nitrogen). The Restatement (Third) of
Unfair Competition adds that, if a design's "aesthetic value" lies in
its ability to "confe[r] a significant benefit that cannot practically be
duplicated by the use of alternative designs," then the design is
"functional." Restatement (Third) of Unfair Competition § 17,
Comment c, pp. 175-176 (1993). The "ultimate test of
aesthetic functionality," it explains, "is whether the recognition of
trademark rights would significantly hinder competition." Id., at
176.
The
upshot is that, where a color serves a significant nontrademark function—whether
to distinguish a heart pill from a digestive medicine or to satisfy the
"noble instinct for giving the right touch of beauty to common and
necessary things," G. Chesterton, Simplicity and Tolstoy 61 (1912)— courts
will examine whether its use as a mark would permit one competitor (or a group)
to interfere with legitimate (nontrademark-related) competition through actual
or potential exclusive use of an important product ingredient. That examination
should not discourage firms from creating esthetically pleasing mark designs,
for it is open to their competitors to do the same. See, e. g., W.
T. Rogers Co. v. Keene, 778 F. 2d 334, 343 (CA7 1985)
(Posner, J.). But, ordinarily, it should prevent the anticompetitive
consequences of Jacobson's hypothetical "color depletion" argument,
when, and if, the circumstances of a particular case threaten "color
depletion."
Third, Jacobson points to many older cases—including Supreme
Court cases—in support of its position. In 1878, this Court described the common-law
definition of trademark rather broadly to "consist of a name, symbol,
figure, letter, form, or device, if adopted and used by a manufacturer
or merchant in order to designate the goods he manufactures or sells to
distinguish the same from those manufactured or sold by another." McLean v. Fleming, 96
U. S. 245, 254. Yet, in interpreting the Trademark Acts of 1881 and 1905, 21
Stat. 502, 33 Stat. 724, which retained that common-law definition, the Court
questioned "[w]hether mere color can constitute a valid
trade-mark," A. Leschen & Sons Rope Co. v. Broderick
& Bascom Rope Co., 201 U. S. 166, 171 (1906), and suggested
that the "product including the coloring matter is free to all who make
it," Coca-Cola Co. v. Koke Co. of America, 254
U. S. 143, 147 (1920). Even though these statements amounted to dicta, lower
courts interpreted them as forbidding protection for color alone. See, e.
g., Campbell Soup Co., 175 F. 2d, at 798, and n. 9; Life
Savers Corp. v. Curtiss Candy Co., 182 F. 2d 4, 9
(CA7 1950) (quoting Campbell Soup, supra, at 798).
These
Supreme Court cases, however, interpreted trademark law as it existed before 1946,
when Congress enacted the Lanham Act. The Lanham Act significantly changed and
liberalized the common law to "dispense with mere technical
prohibitions," S. Rep. No. 1333, 79th Cong., 2d Sess., 3 (1946), most
notably, by permitting trademark registration of descriptive words (say,
"U-Build-It" model airplanes) where they had acquired "secondary
meaning." See Abercrombie & Fitch Co., 537 F. 2d, at
9 (Friendly, J.). The Lanham Act extended protection to descriptive marks by
making clear that (with certain explicit exceptions not relevant here)
"nothing
. . . shall prevent the registration of a mark used by the applicant which has
become distinctive of the applicant's goods in commerce." 15 U. S. C. §
1052(f) (1988 ed., Supp. V).
This
language permits an ordinary word, normally used for a nontrademark purpose (e.
g., description), to act as a trademark where it has gained
"secondary meaning." Its logic would appear to apply to color as
well. Indeed, in 1985, the Federal Circuit considered the significance of the
Lanham Act's changes as they related to color and held that trademark
protection for color was consistent with the
"jurisprudence
under the Lanham Act developed in accordance with the statutory principle that
if a mark is capable of being or becoming distinctive of [the] applicant's
goods in commerce, then it is capable of serving as a trademark." Owens-Corning, 774
F. 2d, at 1120.
In 1988,
Congress amended the Lanham Act, revising portions of the definitional
language, but left unchanged the language here relevant. § 134, 102 Stat. 3946,
15 U. S. C. § 1127. It enacted these amendments against the following
background: (1) the Federal Circuit had decided Owens-Corning; (2)
the Patent and Trademark Office had adopted a clear policy (which it still
maintains) permitting registration of color as a trademark, see PTO Manual §
1202.04(e) (at p. 1200-12 of the January 1986 edition and p. 1202-13 of the May
1993 edition); and (3) the Trademark Commission had written a report, which
recommended that "the terms `symbol, or device' . . . not be deleted or
narrowed to preclude registration of such things as a color, shape, smell, sound,
or configuration which functions as a mark," The United States Trademark
Association Trademark Review Commission Report and Recommendations to USTA
President and Board of Directors, 77 T. M. Rep. 375, 421 (1987); see also 133
Cong. Rec. 32812 (1987) (statement of Sen. DeConcini) ("The bill I am
introducing today is based on the Commission's report and
recommendations"). This background strongly suggests that the language
"any word, name, symbol, or device," 15 U. S. C. § 1127, had come to include
color. And, when it amended the statute, Congress retained these terms. Indeed,
the Senate Report accompanying the Lanham Act revision explicitly referred to
this background understanding, in saying that the "revised definition
intentionally retains . . . the words `symbol or device' so as not to
preclude the registration of colors, shapes, sounds or configurations where
they function as trademarks." S. Rep. No. 100-515, at 44. (In addition,
the statute retained language providing that "[n]o trademark by which the
goods of the applicant may be distinguished from the goods of others shall be
refused registration . . . on account of its nature" (except for certain
specified reasons not relevant here). 15 U. S. C. § 1052 (1988 ed., Supp. V).)
This
history undercuts the authority of the precedent on which Jacobson relies. Much
of the pre-1985 case law rested on statements in Supreme Court opinions that
interpreted pre-Lanham Act trademark law and were not directly related to the
holdings in those cases. Moreover, we believe the Federal Circuit was right in
1985 when it found that the 1946 Lanham Act embodied crucial legal changes that
liberalized the law to permit the use of color alone as a trademark (under
appropriate circumstances). At a minimum, the Lanham Act's changes left the
courts free to reevaluate the preexisting legal precedent which had absolutely
forbidden the use of color alone as a trademark. Finally, when Congress
reenacted the terms "word, name, symbol, or device" in 1988, it did
so against a legal background in which those terms had come to include color,
and its statutory revision embraced that understanding.
Fourth, Jacobson argues that there is no need to permit color
alone to function as a trademark because a firm already may use color as part
of a trademark, say, as a colored circle or colored letter or colored word, and
may rely upon "trade dress" protection, under § 43(a) of the Lanham
Act, if a competitor copies its color and thereby causes consumer confusion
regarding the overall appearance of the competing products or their packaging,
see 15 U. S. C. § 1125(a) (1988 ed., Supp. V). The first part of this argument
begs the question. One can understand why a firm might find it difficult to
place a usable symbol or word on a product (say, a large industrial bolt
that customers normally see from a distance); and, in such instances, a firm
might want to use color, pure and simple, instead of color as part of a design.
Neither is the second portion of the argument convincing. Trademark law helps
the holder of a mark in many ways that "trade dress" protection does
not. See 15 U. S. C. § 1124 (ability to prevent importation of confusingly
similar goods); § 1072 (constructive notice of ownership); § 1065
(incontestible status); § 1057(b) (prima facie evidence of validity and
ownership). Thus, one can easily find reasons why the law might provide
trademark protection in addition to trade dress protection.
IV
Having
determined that a color may sometimes meet the basic legal requirements for use
as a trademark and that respondent Jacobson's arguments do not justify a
special legal rule preventing color alone from serving as a trademark (and, in
light of the District Court's here undisputed findings that Qualitex's use of
the green-gold color on its press pads meets the basic trademark requirements),
we conclude that the Ninth Circuit erred in barring Qualitex's use of color as
a trademark. For these reasons, the judgment of the Ninth Circuit is
Reversed.