PT Medisafe Files Certiorari Petition Seeking to Overturn CAFC Green Medical Glove Genericness Ruling

PT Medisafe Technologies has filed a petition for writ of certiorari with the Supreme Court, seeking to overturn the CAFC's affirmance [here] of the TTAB's decision that upheld a refusal to register a particular shade of green as a trademark for "chloroprene medical examination gloves" on the ground of genericness. The appellate court concluded that the Board applied the correct test for determining whether a color mark is generic, and that substantial evidence supported the Board's factual finding that Medisafe’s proposed mark is generic. PT Medisafe Technologies v. USPTO, Petition No. 25-400 (filed October 1, 2025) (denied November 24, 2025).

The TTAB found that Medisafe’s color mark is generic because it is "so common in the chloroprene medical examination glove industry that it cannot identify a single source." The Board pointed to screenshots of websites selling, under third-party marks, "chloroprene/neoprene medical examination gloves in the same or nearly the same dark green color as in [the] proposed mark." The CAFC, applying the Milwaukee test (color red generic for saw blades), concluded that "substantial evidence supported the Board’s determination that Medisafe’s proposed color mark is generic." The court rejected Medisafe’s claim that the Milwaukee test improperly ignores the statutory language (Section 14(3)) that allows for cancellation of a registration only if the registered mark is a "generic name."

Petitioner's "STATEMENT" (in part)

This case presents a critical question for the owners of color trademarks and the consumers who rely on them to identify the source of the products on which they are used. Namely, what is the legal test for determining whether color trademarks are “generic” under the Trademark Statute?

In particular, Petitioner Medisafe argued that, based on the plain language of 15 U.S.C. § 1064(3), a mark becomes generic only when it “becomes the generic name for the goods or services, or a portion thereof, for which it is registered.” The Federal Circuit rejected this argument and held that the “generic name” requirement of 15 U.S.C. § 1064(3) does not “apply equally to all types of marks.” The Federal Circuit adopted a test for genericness that does not ask if the mark in question “names” or “refers” to the goods and asks instead: 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.

But in so doing, the Federal Circuit crafted a test for genericness that runs afoul of the Trademark Statute, the precedent of this Court, and every other court of appeals. And it presents a risk of grave harm to the owners of legitimate product design trade dress who may lose protection of the trademark law.

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TTABlogger comment: What are the odds that the Supreme Court takes this case?

Text Copyright John L. Welch 2025.