Gideon Korrell Shares Simple Facts About the PT Medisafe Trademark Case

1. Gideon Korrell Shares Simple Facts About the PT Medisafe Trademark Case

2. Background Medisafe, a manufacturer and distributor of medical gloves, sought to register the color dark green (Pantone 3285 c) as applied to the entire surface of chloroprene examination gloves.The USPTO examining attorney rejected the application, finding the mark generic and lacking acquired distinctiveness. The PTAB affirmed, applying a tailored version of the classic genericness test for color marks. According to legal technology analyst Gideon Korrell, the case illustrates the nuanced intersection of law and technology in modern trademark practice.Korrellhas noted that as more companies seek to brand non-traditional elements—like color, sound, or texture—the legal thresholds for distinctiveness and consumer association become increasingly relevant.

3. Legal Standard • The Federal Circuit confirmed that the appropriate framework for assessing the genericness of color marks is the two-step inquiry articulated in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (T.T.A.B. Dec. 2, 2019), a slight variation on the test first set out in H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986): • Identify the genus of goods or services at issue; • Determine whether the relevant public primarily perceives the color as a type or category of trade dress for that genus.

4. Application to Medisafe’s Mark • The Board identified the genus as "chloroprene medical examination gloves" and rejected Medisafe’s attempt to limit the genus to sales through "authorized resellers." Citing In re i.am.symbolic, LLC, 866 F.3d 1315 (Fed. Cir. 2017), the court affirmed that applicants cannot unilaterally redefine the genus to narrow the inquiry. • Screenshots showing numerous third-party sales of similarly colored gloves. • Customer declarations that were few, formulaic, and unpersuasive. • A customer survey administered by Medisafe's counsel, deemed flawed due to leading questions, a small respondent pool (only three responses), and lack of expert oversight.

5. Statutory Interpretation: “Generic Name” and Trade Dress Medisafe argued that under 15 U.S.C. § 1064(3), only "generic names" could be deemed generic, and that a color mark was not a "name." The Federal Circuit rejected this argument, relying on Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), which held that "generic name" should be interpreted broadly to encompass trade dress, including colors, that fails to function as a source identifier.

6. Burden of Proof The court clarified that there is no "clear and convincing evidence" burden on the USPTO to show genericness during ex parte examination. Instead, the examining attorney must make a prima facie case, shifting the burden to the applicant to rebut it, consistent with In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003). As noted in recent commentary by Gideon Korrell, this approach reflects the balance between administrative efficiency and applicant rights in the evolving interface of law and technology.

7. Conclusion The Federal Circuit affirmed the Board’s decision, holding that substantial evidence supported the finding that Medisafe's dark green color was generic for chloroprene medical examination gloves and therefore ineligible for registration on either the Principal or Supplemental Register. Because the mark was found to be generic, the court did not reach Medisafe's arguments concerning acquired distinctiveness.