Precedential No. 4: TTAB Finds Pastel Colors for Disposable Pipette Tips Both Nondistinctive and Functional

Color this applicant blue after the USPTO nixed its five applications to register various pastel colors (blue, green, orange, purple, and yellow) for "disposable pipette tips fitted with a customizable mounting shaft," finding that the proposed marks are not inherently distinctive, lack acquired distinctiveness under Section 2(f), and are functional under Section 2(e)(5). Although Applicant Integra's products have been commercially successful, it failed to prove that relevant consumers perceive the "Pastel Tints" as trademarks. Furthermore, the Pastel Tints are essential to the use of Integra's goods, and therefore de jure functional, because they ensure that customers use the right tip with the right pipette. In re Integra Biosciences Corp., 2022 USPQ2d 93 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).

Applicant Integra Biosciences has been selling its disposable pipettes in pastel colored rack inserts since 2007. It explained that each color is used as part of a "color-coding scheme" to coordinate pipettes and pipette tips to make sure that customers use the appropriate tip on a specific pipette. Each color represents a different size of pipette fitting.

Product or Packaging?: The Board first quickly addressed the question of whether Integra's color marks are applied to the product or to the packaging, since "color can sometime be inherently distinctive on product packaging, but it can never be inherently distinctive on a product itself." See, e.g., In re Forney Indus., 955 F.3d 940, 2020 USPQ2d 10310, at *3-5 (Fed. Cir. 2020). There was no dispute that Integra applies the purported marks to product packing, i.e., rack inserts. The application drawings and the specimens of use "clearly depict the Pastel Tints applied to the packaging inserts," as described in the applications.

Inherently Distinctive? Although "color is usually perceived as ornamentation," color on product packaging may be "inherently distinctive if '[its] intrinsic nature served to identify a particular source.'" Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000) (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081, 1083 (1992)). The issue is whether the trade dress "'makes such an impression on consumers that they will assume' the trade dress is associated with a particular source." Forney Indus., 2020 USPQ2d 10310, at *6 (citing Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ2d 289, 291 (CCPA 1977)).

The Board found it to be common practice for manufacturers to use matching colors on pipette insert racks and pipette fittings in order to assist the user to associate a pipette tip of a particular size with the correct fitting. Integra's use of its Pastel Tints is "simply a refinement of this commonly adopted practice" and therefore consumers will not perceive those colors as source indicators.

Thermo Fisher Scientific racks

Integra argued that the Board must determine the issue as of the date of first use of the colors, or at least as of the application filing dates, because Integra was the first entity to use colors for these products. The Board disagreed: "[w]e render our decisions in ex parte appeals based on the evidentiary record established at the time we make our final decision." See, e.g., In re Air Filters, Inc., 183 USPQ 767, 768 (TTAB 1974).

Acquired Distinctiveness? The Board applied the CAFC's Converse factors in determining whether the proposed marks have acquired distinctiveness. Applicant Integra relied on its alleged use of the colors since 2007, and its sale of more than 1.5 billion pipette tips using the Pastel Tints on the insert racks. However, Integra did not put these number in context; for example, it did not provide any information regarding its market share, number of customers, or frequency of use in an average laboratory. [The Board noted that the number of racks would not equal the number of tips sold]. Nor did it provide any advertising figures, or an proof of "look for" advertising. There was no evidence of intentional copying and no evidence of media coverage.

The Board found Integra's evidence insufficient to meet its "heavy burden" to prove that consumers recognize the use of the Pastel Tints on insert racks as trademarks.

Functionality?: A proposed product packaging mark is functional under Section 2(e)(5) if it is "(1) essential to the use or purpose of the article,' or if it (2) 'affects the cost or quality of the article.'" TrafFix Devices Inc. v. Mktg. Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006 (2001) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.10 (1982)).

The Board found this case similar to Kasco Corp. v. Southern Saw Serv. Inc., 27 USPQ2d 1501 (TTAB 1993), in which the Board deemed functional “a green colored wrapper" for band saw blades for the meat cutting industry. The wrapper was part of a color-coding scheme allowing easy identification of the blade type and size. Competitors of Southern Saw likewise used colored wrappers to distinguish between their blade types. See also Sulzer Mixpac AG v. A&N Trading Co., 988 F.3d 174, 2021 USPQ2d 195 (2d Cir. 2021) (finding color coding system for dental mixing tips to be functional).

Integra conceded that the proposed color marks are part of a color coding scheme, but argued that other colors are available to, and used by, competitors. However, Integra did not "refute the fact that the Pastel Tints ensure that customers use the proper pipette tips on the respective pipettes and that the proper pipette tips are ordered when new ones are needed and, thus, are essential to the use of the pipette tips." The Board pointed out that when the proposed mark is functional under the Inwood test, there is no need to consider competitive necessity.

The Board therefore affirmed the Section 2(e)(5) refusal. 

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TTABlogger comment: It seems odd that the TTAB addressed the distinctiveness issue first. If the proposed mark is de jure functional under Section 2(e)(5), it cannot be distinctive, either inherently or under Section 2(f). Does this suggest that the Board was less sure of the functionality ruling?

Text Copyright John L. Welch 2022.