IP Law Daily, TRADEMARK NEWS—PT Medisafe challenges Federal Circuit’s ‘special rule’ for color trademarks before High Court, (Oct 6, 2025)

By Ravindra Kumar Singh, B.L.

The Federal Circuit misapplied § 1064(3) of the Lanham Act by carving out a special rule for color trademarks, the petitioner contends.

PT Medisafe Technologies has petitioned the U.S. Supreme Court to review a Federal Circuit decision that upheld the Trademark Trial and Appeal Board’s (TTAB) refusal to register Medisafe’s dark-green color mark for medical gloves. The Federal Circuit affirmed the TTAB’s conclusion that the color had become “generic” for the relevant goods and could not function as a source identifier. PT Medisafe argues that the ruling creates an unlawful exception for color marks, contradicts Supreme Court precedent, and disrupts national uniformity in trademark law (PT Medisafe Technologies v. U.S. Patent and Trademark Office, Dkt. No. 25-400 (U.S. filed Oct. 1, 2025)).

Background. PT Medisafe Technologies, an Indonesian manufacturer of medical examination gloves, has supplied chloroprene-based products worldwide for over two decades. It markets its gloves under a distinctive dark-green coloration intended to signal brand origin. The respondent, the United States Patent and Trademark Office (USPTO), through its examining attorney and the TTAB, rejected Medisafe’s application and defended that decision on appeal.

The application sought registration of the color dark green (Pantone 3285C) applied to the entire surface of medical examination gloves made of chloroprene. Medisafe filed U.S. Application Serial No. 88083209 on the Supplemental Register. The company emphasized that the pigment was not functional—it did not affect performance or indicate glove material—but served only to distinguish its products visually. Medisafe also noted that competitors had obtained registrations for other single-color glove marks, such as Kimberly-Clark’s purple nitrile gloves, arguing that its treatment by the USPTO was inconsistent.

The examining attorney refused registration, concluding that dark green had become generic or common for medical gloves because many suppliers used that color to signal “chloroprene” composition. The TTAB affirmed, adopting its earlier formulation from Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 USPQ2d 460354 (TTAB 2019). The Board reasoned that a color is generic if the public perceives it primarily as a type or category of trade dress rather than an indicator of source.

On appeal, the Federal Circuit sustained the TTAB’s ruling. The panel held that § 1064(3)’s phrase “generic name for the goods or services” must be read broadly to encompass non-verbal marks, including color. Citing Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), the court reasoned that color can be “generic” when it denotes a class of trade dress widely used within an industry. The court rejected Medisafe’s argument that “generic name” requires a word or verbal expression that names the product itself.

Equal application of the statutory test. First, Medisafe contends that § 1064(3) establishes a single standard for all marks, limiting cancellation to those that become “the generic name” of the goods. The petitioner argues that the Federal Circuit impermissibly replaced that statutory test with a new one applicable only to colors. Relying on United States PTO v. Booking.com B.V., 591 U.S. 549 (2020), Medisafe notes that genericness turns on consumer perception of whether a term or feature names the class of goods. According to the petition, because no consumer uses “dark green” to name all medical gloves, the mark cannot be generic under § 1064(3).

Consistency. Citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the petitioner asserts that color is capable of trademark significance if it identifies source and is not functional. The Qualitex judgment rejected any categorical exclusion of color marks. Medisafe contends that the Federal Circuit’s “trade-dress category” approach contradicts Qualitex by creating a de facto bar: because every color is necessarily a form of trade dress, it will always fail the Federal Circuit’s test.

Functionality and genericness. Medisafe maintains that the lower tribunals conflated functional use with generic status. It points to Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982), where the Court recognized that colors may be functional—for example, to indicate dosage or safety—but that such functionality is distinct from genericness. The petitioner emphasizes that its dark-green hue is aesthetic, not utilitarian, and therefore cannot be deemed generic merely because competitors use green hues for practical reasons.

Conflict among the circuits. The petition identifies a three-way split on whether trade dress can be generic. The Second and Third Circuits hold that the spectrum of generic, descriptive, suggestive, and arbitrary categories does not sensibly apply to product design. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995); Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431 (3d Cir. 1994). Other circuits—including the First through Eleventh—apply the statutory “generic name” test uniformly to all marks. Medisafe asserts that the Federal Circuit’s deviation from both approaches deepens the split and warrants Supreme Court resolution.

Policy and doctrinal implications. Quoting J. Thomas McCarthy, Trademarks and Unfair Competition § 12:12 (4th ed. 2008), the petition warns that deeming a mark generic “and thus pitch[ing] it into the public domain is a fateful step.” Medisafe also cites empirical research by Xiaoren Wang, Should We Worry About Color Depletion?, 115 Trademark Reporter 545 (2025), showing that hundreds of single-color trademarks have been registered since Qualitex. According to Medisafe, allowing a broad “generic color” doctrine would place long-established brands such as Tiffany’s blue and T-Mobile’s magenta at risk.

Error in statutory interpretation. The petition characterizes the Federal Circuit’s reasoning as circular. Because every color is by definition a “type of trade dress” (Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)), the test guarantees failure for any color mark. Medisafe urges the Court to reaffirm that genericness analysis must ask whether the public perceives the feature as the name of the goods, not whether it is a category of design. The petitioner invokes Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000); Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); and Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), emphasizing that trade dress analysis must remain tethered to source-identifying function rather than categorical form.

Relief. PT Medisafe asks the Supreme Court to grant certiorari, reverse the Federal Circuit’s judgment, and hold that § 1064(3)’s “generic name” test applies equally to color marks. The petitioner seeks restoration of its application for registration of the dark-green color on the Supplemental Register and a declaration that color marks may not be deemed generic absent evidence that consumers use the color term itself as the name of the goods.

The Case is No. 25-400.

Attorneys: Perry R. Clark (Law Offices of Perry R. Clark) for PT Medisafe Technologies. D. John Sauer, U.S Department of Justice, for USPTO.

Companies: PT Medisafe Technologies

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