In In re PT Medisafe Technologies, No. 23-1573 (Fed. Cir. Apr. 29, 2025), the Federal Circuit affirmed the PTAB’s refusal to register a dark green color mark for medical examination gloves, concluding that the color was generic and not eligible for trademark protection.
Background
Medisafe, a manufacturer and distributor of medical gloves, sought to register the color dark green (Pantone 3285 c) as applied to the entire surface of chloroprene examination gloves. The USPTO examining attorney rejected the application, finding the mark generic and lacking acquired distinctiveness. The PTAB affirmed, applying a tailored version of the classic genericness test for color marks.
Legal Standard
The Federal Circuit confirmed that the appropriate framework for assessing the genericness of color marks is the two-step inquiry articulated in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (T.T.A.B. Dec. 2, 2019), a slight variation on the test first set out in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986):
- Identify the genus of goods or services at issue;
- Determine whether the relevant public primarily perceives the color as a type or category of trade dress for that genus.
The Federal Circuit formally adopted the Milwaukee test, finding it consistent with Marvin Ginn and well-suited to evaluating color marks under trademark law principles.
Application to Medisafe’s Mark
The Board identified the genus as “chloroprene medical examination gloves” and rejected Medisafe’s attempt to limit the genus to sales through “authorized resellers.” Citing In re i.am.symbolic, LLC, 866 F.3d 1315 (Fed. Cir. 2017), the court affirmed that applicants cannot unilaterally redefine the genus to narrow the inquiry.
At the second step, the Board concluded that the dark green color was so commonly used for chloroprene gloves across the industry that consumers would perceive it as a standard feature rather than an indicator of source. Supporting evidence included:
- Screenshots showing numerous third-party sales of similarly colored gloves.
- Customer declarations that were few, formulaic, and unpersuasive.
- A customer survey administered by Medisafe’s counsel, deemed flawed due to leading questions, a small respondent pool (only three responses), and lack of expert oversight.
The PTAB found the cumulative evidence sufficient to show that Medisafe’s color mark was generic.
Statutory Interpretation: “Generic Name” and Trade Dress
Medisafe argued that under 15 U.S.C. § 1064(3), only “generic names” could be deemed generic, and that a color mark was not a “name.” The Federal Circuit rejected this argument, relying on Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), which held that “generic name” should be interpreted broadly to encompass trade dress, including colors, that fails to function as a source identifier.
Burden of Proof
The court clarified that there is no “clear and convincing evidence” burden on the USPTO to show genericness during ex parte examination. Instead, the examining attorney must make a prima facie case, shifting the burden to the applicant to rebut it, consistent with In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003).
Conclusion
The Federal Circuit affirmed the Board’s decision, holding that substantial evidence supported the finding that Medisafe’s dark green color was generic for chloroprene medical examination gloves and therefore ineligible for registration on either the Principal or Supplemental Register. Because the mark was found to be generic, the court did not reach Medisafe’s arguments concerning acquired distinctiveness.
Key Takeaway: For color marks, the Federal Circuit has now endorsed a tailored two-step genericness test that focuses on whether the color is perceived by consumers as a type or category of trade dress for a genus of goods. Applicants must be prepared to overcome a significant evidentiary hurdle to establish that a color functions as a source indicator, rather than as a generic feature of the product category.
By Charles Gideon Korrell