Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995)

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certiorari to the united states court of appeals for the ninth circuit

No. 93-1577. Argued January 9, 1995—Decided March 28, 1995

Petitioner Qualitex Company has for years colored the dry cleaning press pads it manufactures with a special shade of green gold. After respondent Jacobson Products (a Qualitex rival) began to use a similar shade on its own press pads, Qualitex registered its color as a trademark and added a trademark infringement count to the suit it had previously filed challenging Jacobson's use of the green-gold color. Qualitex won in the District Court, but the Ninth Circuit set aside the judgment on the infringement claim because, in its view, the Trademark Act of 1946 (Lanham Act) does not permit registration of color alone as a trademark.

Held: The Lanham Act permits the registration of a trademark that consists, purely and simply, of a color. Pp. 162-174. (a) That color alone can meet the basic legal requirements for use as a trademark is demonstrated both by the language of the Act, which describes the universe of things that can qualify as a trademark in the broadest of terms, 15 U. S. C. 1127, and by the underlying principles of trademark law, including the requirements that the mark "identify and distinguish [the seller's] goods . . . from those manufactured or sold by others and to indicate [their] source," ibid., and that it not be "functional," see, e. g., Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U. S. 844, 850, n. 10. The District Court's findings (accepted by the Ninth Circuit and here undisputed) show Qualitex's green-gold color has met these requirements. It acts as a symbol. Because customers identify the color as Qualitex's, it has developed secondary meaning, see, e. g., id., at 851, n. 11, and thereby identifies the press pads' source. And, the color serves no other function. (Although it is important to use some color on press pads to avoid noticeable stains, the court found no competitive need in the industry for the green-gold color, since other colors are equally usable.) Accordingly, unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law protects Qualitex's use of its green-gold color. Pp. 162-166. (b) Jacobson's various special reasons why the law should forbid the use of color alone as a trademark—that a contrary holding (1) will produce uncertainty and unresolvable court disputes about what shades of a color a competitor may lawfully use; (2) is unworkable in light of


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