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Color Marks, Inherent and Acquired Distinctiveness, and Lessons From Fruity Pebbles

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Friday, May 31, 2024 (in 13 days)

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE webinar will guide IP counsel on color marks and how the Trademark Trial and Appeal Board (TTAB) and the courts have treated color marks. The panel will discuss proving distinctiveness and demonstrating that color is not functional. The panel will offer best practices for protecting color marks.

Description

Color has often confounded trademark practitioners. In January 2024, in a precedential decision, the TTAB affirmed the denial of Post Foods' application to register a color mark for its fruity, colorful pebbles. In In re Post Foods L.L.C. (TTAB Jan. 4, 2024) the Board noted that under Qualitex v. Jacobson Products (U.S. 1995) color marks can never be inherently distinctive. Post Foods needed to demonstrate its mark had acquired distinctiveness.

In 2020, the Federal Circuit issued a precedential opinion in In re Forney Industries Inc., in which the court held color marks can be inherently distinctive when used on product packaging even when the color mark is not defined by a peripheral shape or border.

One of the challenges facing IP counsel is proving that the color mark is not functional and also that it is distinctive. Despite the Federal Circuit's ruling, showing distinctiveness remains a hurdle to getting trademark protection.

Listen as our authoritative panel of IP attorneys examines color marks and how the TTAB and the courts have treated color marks. The panel will discuss proving distinctiveness and demonstrating that color is not functional. The panel will offer best practices for protecting color marks.

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Outline

  1. Recent TTAB and court treatment of color marks
  2. Proving distinctiveness
  3. Demonstrating color is not functional
  4. Best practices for protecting color marks

Benefits

The panel will review these and other important questions:

  • What lessons can be drawn from the TTAB's decision in In re Post Foods L.L.C.?
  • What steps can counsel take to demonstrate distinctiveness of a color mark?
  • What approaches should counsel consider to register a color mark successfully?

Faculty

Dalier, Lauriel
Lauriel F. Dalier

Counsel
Sterne Kessler Goldstein & Fox

Ms. Dalier focuses her practice on U.S. and international trademark clearance, prosecution, enforcement, and...  |  Read More

Talley, Monica
Monica Riva Talley

Director, Head of Trademark & Brand Protection Practice
Sterne Kessler Goldstein & Fox

For more than 25 years Ms. Talley has specialized in strategic trademark counseling and portfolio enhancement,...  |  Read More

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You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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