Green Glove Trademark Application Gets Red Light From Federal Circuit

In a precedential decision, the U.S. Court of Appeals for the Federal Circuit recently blessed the test used by the U.S. Trademark Trial and Appeal Board (TTAB) for denying registration to PT Medisafe Technologies for a single color — dark green — as applied to chloroprene medical examination gloves, as shown below:

In re: PT Medisafe Technologies, No. 2023-1573 (Fed. Cir. Apr. 29, 2025).

The TTAB initially relied on familiar case law involving the word mark FIRE CHIEF for the name of a magazine. Under that precedent, the first inquiry is to determine what the “genus” of the goods is and then ask if the relevant public understands the name of the purported trademark as primarily referring to that genus (and thus being available for all to use). It was not a far step to apply the same logic to colors. The first inquiry remains the same, but the second question becomes whether the color is understood as a “category or type of trade dress” for the genus.

Medisafe attacked this expansion of the test in the FIRE CHIEF case, noting that the Lanham Act refers to cancellation of a trademark registration only when it is a generic “name.” Thus, Medisafe would have required that the relevant public consider the term “green glove” or the like as generic before denying registration for the color green. The Federal Circuit dismissed this argument, as otherwise registrations for generic trade dress would be largely immune from cancellation, which would “directly contravene the purpose of the Lanham Act."

At the Trademark Office, Medisafe had tried to carefully tailor both the genus of the goods at issue and the “relevant public” by proposing to amend the goods in its application to gloves sold only by its own authorized resellers. The TTAB rejected this proposed amendment, finding instead that the relevant public was all purchasers and potential purchasers. Allowing trademark applicants to “game the system” by narrowing the goods to only those “sold to my uncle Louis” would have undermined the ability of the Trademark Office to reject marks on genericness or merely descriptive grounds. While usually amendments that narrow the scope of goods in a trademark application are within the applicant’s purview, this was an appropriate example of the Office refusing such an amendment.

Medisafe had also tried to demonstrate that the relevant public viewed the dark green color as a trademark by submitting survey evidence. However, the TTAB found the survey evidence to be entitled to “no probative weight,” considering that it:

1. Was conducted by Medisafe’s counsel and not a survey expert
2. Used leading questions
3. Was sent to only six potential respondents, all of whom were established customers
4. Only received three responses
5. One of the three respondents did not consider the color to be distinctive

Likewise, the TTAB found the declarations Medisafe submitted to not carry much weight, considering that they were identical in form and small in number.

By contrast, in support of finding that the dark green color was generic, the trademark examiner submitted 25 screenshots of websites selling, under third-party trademarks, essentially identical goods in essentially the same color. As the TTAB found, even if the majority of those websites were authorized resellers as claimed by Medisafe, the fact that the gloves were sold under third-party trademarks without identifying Medisafe as the manufacturer supported the argument that the color green was “so common” in the industry that it could not serve as a trademark.

Takeaways

The Federal Circuit’s approval of the TTAB’s test for genericness of color trade dress helps to provide further clarity as to when such trade dress is entitled to protection as a trademark. Brand owners who wish to establish trademark rights in trade dress should be careful when allowing others to use it, especially if third-party word marks are also used. The lack of prominent attribution that the goods come only from “company x” may easily lead consumers to mistakenly believe that the goods are manufactured by a multitude of different sources and that the trade dress is generic and, therefore, free for all to use.