Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re: PT Medisafe Technologies, No. 2023-1573 (April 29, 2025), affirming a decision from the Trademark Trial and Appeal Board rejecting the registration of a color mark for medical examination gloves.
Medisafe had sought to register a particular shade of dark green (Pantone 3285c) as a color mark for its chloroprene examination gloves. The examining attorney, however, refused registration on the grounds that the proposed color mark was generic, relying on the test established in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). That two-part test requires a determination of the genus of goods or services at issue and an evaluation of whether the term sought to be registered is understood by the relevant public to refer to that genus.
On appeal, the Board affirmed the examining attorney. The Board applied a modified version of the Marvin Ginn test that it had developed for evaluating color marks in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (TTAB Dec. 2, 2019), which requires a determination of whether the color is so common within the relevant genus that consumers would primarily associate it with the genus rather than with the specific goods or services. Medisafe appealed.
The Federal Circuit affirmed. Expressly adopting the Board’s Milwaukee Electric test, the Court found that Medisafe’s proposed color mark was generic. More specifically, the Court first rejected Medisafe’s narrower definition of the relevant genus, which would have limited it to only gloves sold to authorized resellers rather than the general public, and then found that substantial evidence supported the Board’s determination that Medisafe’s color mark was “so common in the…medical examination glove industry that it cannot identify a single source” and is therefore generic. The Court also rejected Medisafe’s argument that its proposed color mark had acquired distinctiveness.
Finally, the Court rejected Medisafe’s argument that the Board bore the burden of proof and was required to show by clear and convincing evidence that the mark was generic, noting that the Court has never held that an examining attorney must find genericness by clear and convincing evidence.
