Qualitex Co. manufactured and sold special press pads for commercial dry-cleaning presses. Beginning in the 1950s, it used a distinctive green-gold color on its press pads, and over decades customers came to associate that color with Qualitex as the source. In 1989, Jacobson Products began selling press pads in a similar green-gold color. Qualitex sued in federal district court, asserting unfair competition under §43(a) of the Lanham Act and state law; after obtaining a federal registration in 1991 for the green-gold color applied to its press pads, Qualitex added a claim for infringement of its registered trademark. The district court found for Qualitex, determining that the green-gold color had acquired secondary meaning and was nonfunctional, and it enjoined Jacobson's use. The Ninth Circuit reversed, concluding that a single color could not be protected as a trademark. The Supreme Court granted certiorari to resolve whether the Lanham Act permits trademark protection for a color per se.
Does the Lanham Act permit registration and protection of a trademark that consists solely of a single color used on a product, provided the color has acquired secondary meaning and is nonfunctional?
Under the Lanham Act, "any word, name, symbol, or device, or any combination thereof" that is used to identify and distinguish a party's goods and to indicate their source may serve as a trademark, so long as it is not functional. A single color can qualify as a trademark if (1) the color has acquired distinctiveness (secondary meaning) in the relevant market, and (2) the color is nonfunctional—that is, it is not essential to the use or purpose of the article, does not affect its cost or quality, and its exclusive appropriation would not put competitors at a significant non-reputation-related disadvantage.
Yes. A single color may be registered and protected as a trademark under the Lanham Act if it has acquired secondary meaning and is nonfunctional. The Supreme Court reversed the Ninth Circuit and remanded.
The Court, per Justice Breyer, began with the Lanham Act's broad text, which protects "any word, name, symbol, or device" used to identify and distinguish goods. Nothing in the statute excludes color. Indeed, the Act's inclusive language and its focus on source identification support recognizing color as a potential mark where it helps consumers distinguish source. The Court emphasized that trademark law's core purpose is to reduce consumer search costs and protect producers' goodwill; if a color performs that source-identifying function, its status as "color" does not disqualify it. Addressing policy objections, the Court rejected the so-called color depletion and shade confusion rationales. Concerns that competitively necessary colors could be locked up are adequately addressed by the functionality doctrine, which bars protection for features essential to a product's use or that confer non-reputation-related competitive advantages (e.g., the color black for outboard motors to better match many boat colors or reduce perceived size). Similarly, any administrability issues regarding close shades and likelihood of confusion are problems courts routinely manage in trademark disputes through evidence and standard infringement analysis. The Court further explained that color marks must acquire secondary meaning before they can be protected; consumers must come to associate the color with a single source. This requirement screens out attempts to claim colors that have not achieved source significance. Separately, the functionality doctrine prevents color monopolies that would hinder competition. Nonfunctional, source-identifying colors—such as the pink insulation in Owens-Corning—may be protected, but colors that yield utilitarian or significant aesthetic advantages may not. Applying these principles, the Court concluded that the Ninth Circuit's per se rule against color marks was inconsistent with the statute and modern trademark principles. Because the district court had found Qualitex's green-gold color both distinctive and nonfunctional, the Supreme Court reversed and remanded for proceedings consistent with its opinion.
Qualitex confirms that nontraditional indicators—specifically, single colors—can function as trademarks, provided they have secondary meaning and are nonfunctional. The case anchors the modern approach to trade dress and unconventional marks, treating them under the same analytic framework as word and logo marks. It also sharpens the functionality limitation, including aesthetic functionality, as a critical check against granting trademark rights that would unfairly hinder competition. For law students, Qualitex is foundational to understanding the breadth of protectable subject matter under the Lanham Act and the balance between source identification and competitive need.
Qualitex modernized trademark doctrine by recognizing that colors, like other symbols, can tell consumers who made a product. The Court grounded its decision in the Lanham Act's expansive text and the pragmatic recognition that market participants rely on a variety of nontraditional indicators to convey source. By rejecting categorical bans on color marks, the Court aligned trademark law with branding realities.