IP Law Daily, TRADEMARK—8th Cir.: Eighth Circuit affirms cancellation of chartreuse hose trademark, $3 million fee award, (Jul 31, 2026)

By Patricia K. Ruiz, J.D.

The court upheld findings that color served a safety function and that case qualified as exceptional under the Lanham Act.

The Eighth Circuit affirmed a district court judgment canceling Weems Industries' registered trademark for the chartreuse color used on its water hoses, concluding that the color is a functional product feature that cannot be protected as a trademark. The appeals court also upheld an award of more than $3 million in attorney fees to competitor Teknor Apex, agreeing that the litigation qualified as an exceptional case under the Lanham Act. Because the court affirmed on functionality grounds, it did not reach the district court's separate finding that the color lacked acquired distinctiveness (Weems Industries, Inc. v. Teknor Apex Co., No. 24-3608 (8th Cir. Jul. 30, 2026)).

Background. The dispute arose from a trademark infringement action filed in 2020 by Weems Industries, doing business as Legacy Manufacturing Company, against competitor Teknor Apex Company. Weems alleged that Teknor's fluorescent green and fluorescent yellow hoses infringed Weems' registered trademark covering the chartreuse color applied to the body of its water hoses. Teknor counterclaimed, seeking cancellation of the registration. Following a bench trial, the Northern District of Iowa canceled the registration, dismissed Weems' claims, and awarded attorney fees to Teknor. Weems appealed the cancellation order and the fee award. In November 2024, the district court concluded that the chartreuse color mark was invalid because the color was functional and lacked distinctiveness, ordered cancellation of the registration, and entered judgment for Teknor. The court also later awarded attorney fees.

Functionality finding affirmed. The Eighth Circuit held that the district court did not clearly err in finding that the chartreuse color on Weems' hoses is functional. The court noted that although registration on the Principal Register gave Weems a rebuttable presumption that the mark was valid and nonfunctional, Teknor "firmly rebutted" that presumption.

According to the court, the most significant evidence came from Weems' own marketing efforts. The record showed that Weems "undertook aggressive efforts to tout the safety benefits" of the high-visibility color, directing sales representatives and marketing agencies to emphasize that the color made hoses easier to see and helped prevent tripping accidents. The court noted that advertisements and product packaging repeatedly promoted those visibility benefits.

The court pointed to patent evidence describing the visibility advantages of chartreuse colors on various products, along with testimony from a color expert who stated that chartreuse makes water hoses easier to see, particularly in low-light conditions. Even Weems' own color expert acknowledged that yellow-green is a high-visibility color, the court said.

Rejecting Weems' argument that a feature is functional only if it improves a product's operation, the court said a feature may be functional if it affects a product's quality. Although the color did not make hoses more durable or reliable, the court concluded that making them easier to see and safer affected their quality and therefore rendered the color functional.

The court rejected Weems' contention that Teknor could have chosen alternative highly visible colors, stating that competitors need not pursue alternative designs when a product feature affects the quality of a good. Because functionality alone was sufficient to invalidate the mark, the court declined to address whether the district court correctly found that the color lacked acquired distinctiveness.

Fee award upheld. The Eighth Circuit affirmed the district court's award of more than $3 million in attorney fees under the Lanham Act's exceptional-case provision. The district court had based that determination on Weems' conduct before the U.S. Patent and Trademark Office, its conduct during the litigation, and its continued reliance on what the court viewed as an incorrect application of the functionality standard.

Regarding the trademark application process, the court said the record supported the district court's finding that Weems was not forthcoming with the USPTO while seeking registration. According to the opinion, Weems was simultaneously promoting the safety benefits of the chartreuse color in marketing materials while providing the USPTO with selected materials that did not emphasize visibility. The court cited evidence that Weems feared the trademark registration could be jeopardized if materials describing the color as "safety green" were submitted to the agency.

The court upheld the district court's assessment of Weems' conduct during trial, finding that Weems objected to more than 700 of Teknor's trial exhibits and determined that many of those objections lacked merit. The district court further found that testimony from some of Weems' principal officers was "plainly incredible" on several important issues. The appeals court found no abuse of discretion in considering those circumstances.

The court agreed that Weems persistently focused on the wrong aspect of the functionality analysis by largely disregarding whether the color affected the quality of the product. The district court had concluded that this continued failure to focus on the applicable legal standard helped push the case into exceptional-case territory.

The court also rejected Weems' argument that the fee award was punitive rather than compensatory. According to the court, the district court reasonably found that Weems' conduct, especially before the USPTO, affected the entire case and enabled Weems to obtain the registration that formed the basis for the litigation. The court agreed that substantial litigation resources would not have been expended had the registration not been obtained. Finding no clear error in the functionality ruling and no abuse of discretion in the attorney-fee award, the Eighth Circuit affirmed the judgment in full.

The Case is No. 24-3608.

Judge: Arnold, M.

Attorneys: Charles Everett Forney (Brick & Gentry) for Weems Industries, Inc. Spencer S. Cady (Nyemaster & Goode) for Teknor Apex Co.

Companies: Weems Industries, Inc.; Teknor Apex Co.

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