TTAB Affirms Genericness Refusal of the Color Dark Green for Medical Examination Gloves

The Board affirmed a refusal to register the color dark green (Pantone No. 3285 c) for “chloroprene medical examination gloves sold only to authorized resellers,” on the ground of genericness, or on the alternative ground that the proposed mark is not inherently distinctive and lacks acquired distinctiveness. The Board found that relevant consumers are exposed to medical gloves of the same color or very similar shades of dark green under a wide variety of marks, and from manufacturers other than Applicant, such that Applicant's proposed mark cannot serve as a source-indicator. In re PT Medisafe Technologies, Serial No. 88083209 (February 15, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The applicable test for genericness of a color mark is slightly different than that for a word mark, but it is still a two-step inquiry: "we first consider the genus of goods or services at issue, and second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services." [Emphasis supplied].

Examining Attorney Christopher M. Law maintained that the proper genus at issue is "medical examination gloves." Applicant contended that the proper genus must be what is stated in its identification of goods. The Board decided, however, that the genus is "chloroprene medical examination gloves," noting that the material composition of examination gloves "appears to have significance in the industry." As to the additional limitation in the identification, "sold only to authorized retailers," the Board refused to so limit the genus.

Limiting the genus to goods sold to Applicant’s authorized resellers would foreclose relevant evidence to prove that chloroprene medical gloves in the color in question are common in the industry and come from numerous sources. *** This limitation, particularly when the nature of Applicant’s so-called “authorized resellers” is completely open-ended and subject to change, cannot be relied on to restrict the genus only to Applicant’s goods.

As to the relevant public, the Board found that consumers include "a broad range of the general public and industry," such as "caregivers, food handlers, dentists and other professionals, healthcare personnel and institutions, research laboratories, food processing facilities, and people who want gloves for 'general cleaning tasks.'"

Applicant conceded that the color green is in common use for medical gloves, but it maintained that its specified shade of green serves as a source indicator. However, the examining attorney submitted "voluminous evidence under third-party marks of chloroprene/neoprene medical examination gloves in the same of nearly the same color as in Applicant's proposed mark." Some of the examples were gloves manufactured by applicant but sold under third-party marks.

“Generally, when a company sells a product to third parties for re-sale under the third parties’ marks rather than under the manufacturer’s mark, that circumstance cripples any attempt to show that consumers uniquely associate the product’s trade dress with one source, i.e., the manufacturer.”

Applicant submitted two customer declarations, identical in form but of little substance. Applicant also submitted the results of a "survey" conducted by its counsel, but it was "so flawed as to be entitled to no probative weight."

We find that the evidence as a whole, including material not specifically excerpted or discussed herein, shows that dark green, in a shade identical or similar to Applicant’s, is so common in the chloroprene medical examination glove industry that it cannot identify a single source. The proposed color mark is generic, and cannot serve as a source-indicator.

For purposes of completeness, the Board also considered Applicant's claim of acquired distinctiveness, The Board found that its use of the proposed mark was "far from 'substantially exclusive' within the meaning of Section 2(f)," and its other evidence missed the mark.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: I have trouble calling a proposed color mark "generic." I think a "failure-to-function" refusal would have fit like a ....

Text Copyright John L. Welch 2023.