Response Paper: Qualitex Co. V. Jacobson Products Co.
- IJLLR Journal
- Oct 3
- 2 min read
S Pranati Rao, RV University, Bengaluru
Background
Since the 1950s, Qualitex Company had been producing press pads for dry cleaning that were dyed a particular shade of green-gold. In 1989, Jacobson Products, a rival, initiated the sale of its own press pads with a green-gold colour similar to that of Qualitex. Instead of Qualitex merely reacting, it went a step further to register the particular shade as a trademark with the U.S. Patent and Trademark Office in 1991. Qualitex, after registering the colour, filed a claim of trademark infringement against Jacobson, which was more than just a new complaint. It questioned the use of the green-gold colour on press pads by Jacobson.
Procedural History
In the beginning, Qualitex was the winner of the lawsuit in the District Court, which recognized that the green-gold colour of its product had achieved secondary meaning and could identify the source. In turn, the Ninth Circuit's Court of Appeals reversed the order in the infringement issue, holding one colour alone was not registrable as a trademark under the Lanham Act. At that point, an appellate circuit split had developed on the question whether a colour could be trademarked, with the Supreme Court granting certification to settle the issue.
Functionality and Colour Depletion
Whether colours should not be given trademark protection because they are most of the time used as a function was one of the major issues around this case. The fear was that if businesses were permitted to have exclusive rights over certain colours, then their rivals would be unfairly limited in an industry where colour happens to be a practical solution, for instance, differently coloured pills to help patients distinguish medicines, or the use of blue in fertilizers to indicate the nitrogen content. The concern also extended to the “colour depletion” issue, whereby due to the limitation of the colour spectrum, it is argued that there will be fewer and fewer hues left for companies to select from as they gradually take over each one.
