CAFC Affirms TTAB: Dark Green Color is Generic for Chloroprene Medical Examination Gloves

The CAFC upheld the Board's decision [TTABlogged here] affirming 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. In re PT Medisafe Technologies, Appeal No. 2023-1573 (Fed. Cir. April 29, 2025) [precedential].

The Genericness Test: The Board applied the two-part test it set out in Milwaukee Electric Tool, 2019 WL 6522400, at *9 [TTABlogged here], a modification of the Marvin Ginn test, which had not expressly considered color marks.

Whereas H. Marvin Ginn asks whether “the term sought to be registered or retained on the register [is] understood by the relevant public primarily to refer to [a] genus of goods or services,” 782 F.2d at 990 (emphasis added), Milwaukee asks “whether the color sought to be registered . . . is understood by the relevant public primarily as a category or type of trade dress for [a] genus of goods or services,” 2019 WL 6522400, at *9 (emphasis added).

The CAFC agreed that the Milwaukee test is appropriate for color marks and expressly adopted it.

Medisafe argued that the Milwaukee test improperly ignores language in the Lanham Act, which (Medisafe contended) allows for cancellation of a registration for genericness only when the mark is a "generic name." The court observed that it rejected "essentially this same contention" in Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), where the CAFC held that the statutory language "must be read expansively to encompass anything that has the potential but fails to serve as an indicator of source, such as . . . trade dress." Id. at 1325-26. The court here reiterated that "'trade dress,' including a color mark, 'that cannot serve as an indicator of source is generic and unprotectable.'"

The Genericness Finding: The Board properly deemed the genus at issue to be "chloroprene medical examination gloves." It did not err in rejecting the additional verbiage "sold only to authorized resellers." "The Board is not compelled to accept an applicant’s proposed definition of the applicable genus, and was right not to 'limit the universe of chloroprene medical examination gloves under evidentiary consideration to [Medisafe’s] own products.'"

The CAFC concluded that substantial record evidence - including screenshots of websites offering third-party chloroprene/neoprene medical examination gloves in the same or nearly the same dark green color - supported the Board's finding that the color of the proposed mark "'is so common in the chloroprene medical examination glove industry that it cannot identify a single source' and is, therefore, generic."

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TTABlogger comment: Does a failure-to-function refusal fit better here? I think the Milwaukee test (2019) may have been created before the wave of failure-to-function cases arrived.

Text Copyright John L. Welch 2025.