Qualitex Co v Jacobson Products Co 93 1577 514 U S 159 1995 SUPREME COURT OF THE UNITED STATES Syllabus 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 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 Lanham Trademark Act of 1946 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 2 15 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 2 7 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 7 15 13 F 3d 1297 reversed Breyer J delivered the opinion for a unanimous Court OCTOBER TERM 1994 Syllabus 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 160 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
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