Shades of Green: How Pantone Designations Saved a Color Trademark Appeal

Overview

This case is a TTAB precedent.

The Trademark Trial and Appeal Boardreversed a refusal to register a specific shade of green on the Supplemental Register for medical examination gloves. The Board’s decision centered on the visual dissimilarity between the two shades and the "crowded field" of green medical gloves in the marketplace under the 13th DuPont factor.

Background

The Applicant, Medline Industries, Inc., filed an application for the color green, specifically, Pantone 2274 C, seeking trademark registration for medical examination gloves in International Class 10.

The Examining Attorney issued a refusal under Section 2(d) of the Trademark Act, citing a likelihood of confusion with Registration No. 5278439. That existing registration covers another shade of green (Pantone 7488U) for "gloves for medical use" and "protective gloves for medical use."

Additionally, the Examining Attorney asserted that Applicant's green color mark was not inherently distinctive.

In an effort to bypass the distinctiveness issue, the Applicant amended its application to the Supplemental Register. However, the Examining Attorney maintained the 2(d) likelihood of confusion refusal. Applicant requested reconsideration, which was denied. Applicant appealed.

How the Board Analyzed the DuPont Factors

Before diving into the merits of the likelihood of confusion refusal, the Board first addressed some preliminary evidentiary issues.

In its appeal brief, the Applicant attempted to introduce screenshots from the Pantone and Benjamin Moore websites to demonstrate the vast range of greens available in the marketplace. However, the Examining Attorney objected to this evidence as untimely. The Board sustained the objection, reiterating that under Trademark Rule 2.142(d), the evidentiary record must be completely closed prior to the filing of an appeal.

Additionally, the Applicant requested that the Board take judicial notice of "various shades of green" under Federal Rule of Evidence 201, to confirms the existence of myriad shades.

The Board flatly denied this request. While the baseline existence of the color green might be an elemental fact, the Board clarified that specific trademarked shades and their exact volume are neither generally known facts nor easily verified by an indisputable source.

DuPont #2 and #3: Similarity of the Goods and Channels of Trade

The Board began its substantive analysis by examining the second and third DuPont factors, which assess the similarity of the goods and their respective trade channels. The Examining Attorney argued that the goods were legally identical because the broad language of the cited registration fully encompassed the Applicant's more specific description. The Board agreed, finding the goods to be legally identical.

The Examining Attorney argued that these goods were legally identical because the broad wording of the cited registration encompassed the more specific goods of the Applicant. The Board agreed with this assessment, finding the goods to be legally identical.

Furthermore, because the goods were legally identical and the identifications contained no limitations regarding channels of trade or classes of consumers, the Board presumed that the trade channels and target consumers overlapped completely. The Board identified the relevant consumers as both bulk medical supply purchasers (such as hospital procurement agents) and end users (including doctors, dentists, and nurses).

Consequently, the Board concluded that the second and third DuPont factors weighed heavily in favor of a likelihood of confusion.

DuPont #6: Number and Nature of Similar Marks in Use

The Applicant argued that the market for green medical gloves was "crowded," submitting evidence of over 40 third-party gloves available in various shades of green. It contended that in such a saturated field, consumers naturally learn to distinguish between brands based on minute visual differences.

The Examining Attorney countered that the Applicant failed to show that any of these third parties actually used the color green as a source identifier. He argued that the record only demonstrated trademark use by two parties: the Applicant and the Registrant.

The Board noted that in single-color cases, the existence of third-party marks is what matters for the sixth factor, not just the presence of colored goods. The Board found that none of the third-party examples in the record were identified or referred to as trademarks. Instead, the evidence showed that third parties often referred to the green color for functional reasons, such as "high-visibility" for safety or to detect perforations in "double-gloving" systems. Because the third-party uses were decorative or functional rather than trademark-based, the Board found the sixth DuPont factor to be neutral.

DuPont #13: Any Other Established Fact Probative of the Effect of Use

Despite finding the sixth factor neutral, the Board deemed the evidence of third-party use highly relevant under the catch-all thirteenth DuPont factor, which allows for the consideration of "any other established fact probative of the effect of use." As a starting point, the Board noted that the cited mark was registered on the Supplemental Register, automatically characterizing it as legally weak.

The Board emphasized that the "widespread use of a color in a particular market impairs an entity’s ability to show that its proposed color mark has acquired distinctiveness."

The Board determined that this widespread marketplace presence corroborated the inherent weakness of the cited mark, strictly limiting its scope of protection. Because the cited mark could not claim broad exclusivity over the entire color green in the medical glove industry, this evidence ultimately weighed against a finding of a likelihood of confusion.

DuPont #1: Similarity or Dissimilarity of the Marks

As the Supreme Court famously held in Qualitex Co. v. Jacobson Prods. Co., there is no special legal rule preventing color alone from serving as a trademark, provided it meets ordinary statutory requirements. Because the marks in this case are non-literal designs consisting of a single color, the Board’s analysis rested primarily on visual similarity.

The Examining Attorney argued that despite having different Pantone designations, both marks should be characterized simply as "green" because everyday consumers are unaware of specific industrial color codes. By oversimplifying both colors into a single generic category, the Examining Attorney took the position that the cited registration effectively barred all shades of green for medical gloves.

The Board flatly rejected this per se approach. It noted that both the application and the cited registration explicitly utilized precise Pantone designations to identify their respective shades. The Board clarified that the inclusion of these specific codes confirmed that neither party claimed "plenary rights in the color green," but rather narrow rights limited to a distinct shade. Ultimately, the drawing of the mark remains the controlling factor.

In visually comparing the two shades, the Board described the Registrant’s Pantone 7488U as a "bright, attention-grabbing hue" squarely in the green family. In contrast, it described the Applicant’s Pantone 2274C as a "subdued, pale shade" resting on the "outer periphery" of the color family.

Even taking into account the "fallibility of human memory," the Board found that the marks were distant relatives rather than confusingly similar. In fact, because the color covers the entire surface of the gloves, the Board concluded that the sheer prominence of the marks actually makes it easier for consumers to distinguish between the two shades. Consequently, the first DuPont factor strongly supported the conclusion that confusion was unlikely.

Board’s Decision

The TTAB reversed the Section 2(d) refusal, clearing the way for the registration of the Applicant’s mark on the Supplemental Register.

In balancing the competing factors, the Board concluded that the significant visual differences between Applicant's pale shade of green and the Registrant's bright shade outweighed the absolute identity of the goods and trade channels. The Board emphasized that the widespread, non-trademark use of various green shades by third-party competitors heavily restricted the scope of protection afforded to the cited mark.

Consequently, the Board held that consumers are not likely to mistakenly believe that medical gloves in the Applicant's distinct, subdued hue originate from, or are sponsored by, the same entity that produces the Registrant's vibrant green gloves.