TTAB finds colour black unregistrable for floral packaging

Under US law, there are two ways in which a claimed trademark or service mark can be functional and therefore ineligible for protection as a mark:

• it can be functional in the utilitarian sense if it is essential to the use or quality of the associated good or service; and
• it can be functional in the aesthetic sense if it otherwise is competitively necessary in the industry in which the claimant participates.

By the same token, a claimed mark may be ineligible for protection and registration if it is merely ornamental. Although applications of these doctrines have waned in recent years, the US Trademark Trial and Appeal Board (TTAB) recently found in In re Florists’ Transworld Delivery Inc (No 77590475 (March 28 2013) [precedential]) that the colour black was both aesthetically functional and merely ornamental when used on packaging for flowers and live-cut floral arrangements. It therefore affirmed the refusal of the US Patent and Trademark Office to register the colour for those goods.

In reaching the first of these findings, the TTAB undertook a two-part functionality inquiry. First, it declined to find that black was functional in the utilitarian sense, either because the colour was essential to the use or purposes of the flowers sold under it or because it affected their cost or quality. Turning to aesthetic functionality, the TTAB held that:

"A feature that is not essential to the use or purpose of the article, or does not affect the cost or quality of the article – in other words, would not be considered as utilitarian... – is still prohibited from registration if the exclusive appropriation of that feature would put competitors at a significant non-reputation-related disadvantage."

Applying this test, the TTAB determined that “[t]he evidence in the record reflects that, indeed, in the floral industry, colour has significance and communicates particular messages”. One such message found by the TTAB was that “black communicates ‘elegant’, ‘classical’ or ‘luxurious’ in the context of floral packaging”. Beyond this, “the evidence reflects that black has significance on somber occasions such as in the context of death... With regard to floral packaging, black is an appropriate colour for floral packaging, and is used as floral packaging in bereavement bouquets”. Finally, there was record evidence that “black is also a traditional Halloween colour, and is used as a colour in Halloween floral bouquets or on containers for Halloween bouquets”. From this, the TTAB concluded that:

"[T]here is a competitive need for others in the industry to use the colour black in connection with floral arrangements and flowers. Competitors who, for example, want to offer flowers for bereavement purposes, Halloween or to imbue an element of elegance or luxury to their presentations through packaging therefor will be disadvantaged if they must avoid using the colour black in such packaging."

Unfortunately for the applicant, the TTAB also found that black was unregistrable because the colour was merely ornamental in the context of the applicant’s use. The applicant attempted to overcome that finding by submitting evidence that its mark had acquired distinctiveness, but the TTAB found that the applicant’s evidence was wanting for a number of reasons:

• although the applicant may have prominently displayed a black box in its advertising, “it has done so with other matter on the box”;
• the applicant had not engaged in 'look-for' advertising for any length of time;
• evidence of the scope of the distribution of mailers featuring the colour was missing from the record;
• visitors to the applicant’s website had for the most part not seen evidence that the applicant was claiming rights to the colour; and
• four “essentially identical” consumer declarations submitted by the applicant were “simply insufficient” to establish distinctiveness.

Theodore H Davis Jr, Kilpatrick Townsend & Stockton LLP, Atlanta