OCTOBER TERM, 1994
QUALITEX CO. v. JACOBSON PRODUCTS CO., INC.
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. Mter 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 "ftmctional," 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
the limited supply of colors that will soon be depleted by competitors; (3) is contradicted by many older cases, including decisions of this Court interpreting pre-Lanham Act trademark law; and (4) is unnecessary because firms already may use color as part of a trademark and may rely on "trade dress" protection-are unpersuasive. Pp. 166-174.
13 F.3d 1297, reversed.
BREYER, J., delivered the opinion for a unanimous Court.
Donald G. Mulack argued the cause for petitioner. With him on the briefs were Christopher A. Bloom, Edward J. Chalfie, Heather C. Steinmeyer, and Ava B. Campagna.
Deputy Solicitor General Wallace argued the cause for the United States as amicus curiae urging reversal. With him on the brief were Solicitor General Days, Assistant Attorneys General Hunger and Bingaman, Diane P. Wood, James A. Feldman, William Kanter, Marc Richman, Nancy J. Linck, Albin F. Drost, Nancy C. Slutter, and Linda Moneys Isacson.
Laurence D. Strick argued the cause and filed a brief for respondent. *
JUSTICE BREYER delivered the opinion of the Court.
The question in this case is whether the Trademark Act of 1946 (Lanham Act), 15 U. S. C. §§ 1051-1127 (1988 ed. and Supp. V), permits the registration of a trademark that con-
*Briefs of amici curiae urging reversal were filed for the Bar Association of the District of Columbia by Bruce T. Wieder, Sheldon H. Klein, and Linda S. Paine-Powell; for B. F. Goodrich Co. by Lawrence S. Robbins and Mary Ann Tucker; for the Crosby Group, Inc., by Robert D. Yeager; for Dr Pepper/Seven-Up Corp. by David C. Gryce; for the Hand Tools Institute et al. by James E. Siegel, Witold A. Ziarno, and Rosemarie Biondi-Tofano; for Intellectual Property Owners by George R. Powers, Neil A. Smith, and Herbert C. Wamsley; for the International Trademark Association by Christopher C. Larkin, Joan L. Dillon, and Morton David Goldberg; and for Owens-Corning Fiberglas Corp. by Michael W Schwartz and Marc Wolinsky.
Arthur M. Handler filed a brief for the Private Label Manufacturers Association as amicus curiae urging affirmance.