Federal Circuit Affirms Two-Part Test for Determining Genericness of Color Marks

In a precedential opinion issued on April 29, 2025, the United States Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board's (TTAB) decision in In re PT Medisafe Technologies, solidifying the legal test used to determine when a color mark is deemed generic. The ruling confirms the applicability of a modified version of the H. Marvin Ginn test, explicitly tailored for color marks, underscores the high evidentiary burden applicants must meet to register color-based trade dress.

Background

PT Medisafe Technologies, a manufacturer of chloroprene medical examination gloves, sought to register the color dark green (Pantone 3285 C) as a trademark for its gloves. After a detailed examination, the USPTO rejected the application, determining that the color mark was generic and had not acquired distinctiveness. Medisafe appealed to the TTAB, and subsequently to the Federal Circuit, challenging both the genericness finding and the legal standard used to reach it.

The Legal Standard: Marvin Ginn and Its Tailored Application to Color

At the center of the dispute was the proper test for determining whether a color mark is generic. The Federal Circuit held that the TTAB correctly applied a two-part test adapted from its precedent in H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, 782 F.2d 987 (Fed. Cir. 1986). The original Marvin Ginn test involves two steps:

1. What is the genus of goods or services at issue?

2. Does the relevant public understand the term (or mark) primarily to refer to that genus?

   
   

In Medisafe, the Court formally adopted a variation first outlined in Milwaukee Electric Tool Corp. v. Freud America, Inc., tailored specifically for color marks. The modified version preserves the two-step structure but refines the second step to focus on whether the public perceives the color as a "category or type of trade dress" for the genus of goods.

This nuanced approach allows courts and the USPTO to assess whether a color is so commonly used in an industry that consumers would not associate it with a single source, but instead with a type of product. This refinement acknowledges the different ways in which non-verbal marks like colors function in the marketplace compared to traditional word marks.

Medisafe's Argument and the Court's Rejection

Medisafe contended that under the Lanham Act, a mark can be deemed generic only if it is a "generic name" for goods, and that colors do not qualify as "names." The Federal Circuit decisively rejected this argument, referencing its earlier holding in Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), where it clarified that the term "generic name" under 15 U.S.C. § 1064(3) must be interpreted expansively to include all types of marks—words, designs, shapes, or colors—that fail to serve as source identifiers. Otherwise, trade dress would enjoy broader protections than word marks, a result contrary to the goals of trademark law.

Substantial Evidence of Genericness

Applying the confirmed two-part test, the Court upheld the TTAB's factual findings that:

• The relevant genus of goods was "chloroprene medical examination gloves," not limited to those sold through Medisafe's authorized resellers.

• Dark green was widely used across various brands for chloroprene gloves, as evidenced by 25 examples of third-party sellers offering similarly colored gloves.

• The public, including medical professionals and resellers, would likely view the dark green color as a standard feature of such gloves, not an indication of a specific source.

Additionally, the Court found Medisafe's survey evidence to be methodologically flawed, minimally persuasive, and ultimately insufficient to rebut the prima facie case of genericness.

Broader Impact

The Federal Circuit's endorsement of the Milwaukee test as the governing framework for evaluating genericness in color marks brings clarity and uniformity to trademark law. It recognizes that color, like any other brand element, can serve as a source identifier—but only if consumers actually perceive it as such. Where a color is ubiquitous across competing products, it loses any trademark significance and becomes generic.

Conclusion

In affirming the TTAB's ruling, the Federal Circuit in In re PT Medisafe Technologies firmly established that color marks are subject to the same conceptual scrutiny as word marks. The case underscores the importance of robust consumer perception evidence when seeking trademark protection for product colors and signals that mere use of a distinctive color is not sufficient—applicants must show that consumers uniquely associate that color with their brand.