Forney Industries, Inc.

Trademark Trial and Appeal Board

Oct 6, 2020

86269096 (T.T.A.B. Oct. 6, 2020)

This Decision is Not a
Precedent of the TTAB

Mailed: October 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Forney Industries, Inc.
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Serial No. 86269096
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On Remand from the United States
Court of Appeals for the Federal Circuit
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William W. Cochran of Cochran Freund & Young LLC, for
Forney Industries, Inc.
Stacy Wahlberg, Managing Attorney, Law Office 103.1
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Before Taylor, Kuczma and Adlin, Administrative
Trademark Judges.

By Kuczma, Administrative Trademark Judge:
On September 10, 2018, a final decision was issued by the Board affirming the
refusal to register Applicant’s mark pursuant to Sections 1, 2 and 45 of the

1 Emily K. Carlsen was the Trademark Examining Attorney during prosecution, and is now
serving in the Office of Trademark Petitions; Stacy Wahlberg is the current Managing
Attorney of Law Office 103.
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Trademark Act on the ground that Applicant’s color mark, , described in
the application as consisting “of the colors red into yellow with a black banner located
near the top as applied to packaging for the goods” with “[t]he dotted lines merely
depict[ing] placement of the mark on the packing backer card,” is incapable of being
inherently distinctive because it is merely a color mark. In re Forney Indus., Inc., 127
USPQ2d 1787 (TTAB 2018).
Applicant appealed the decision to the United States Court of Appeals for the
Federal Circuit, which vacated the Board’s decision and remanded the case for
further proceedings. The Court determined the Board erred in holding that the
proposed mark is merely a color mark that is incapable of being considered inherently
distinctive, but rather constituted a “particular combination of … colors, arranged in
a particular design.” In re Forney Indus., Inc., 955 F.3d 940, 2020 USPQ2d 10310 at
**6 (Fed. Cir. 2020). It remanded “for the Board to consider, whether, for the uses
proposed, Forney’s proposed mark is inherently distinctive under the Seabrook2
factors, considering the impression created by an overall view of the elements
claimed.” Id., 2020 USPQ2d 10310 at **7. The Court’s opinion noted:
The question the Board must answer is whether, as used
on its product packaging, the combination of colors and the
design those colors create are sufficiently indicative of the
source of the goods contained in that packaging. And the
Board must assess that question based on the overall

2 Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA
1977).
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impression created by both the colors employed and the
pattern created by those colors.
2020 USPQ2d 10310 at **6.
Because the remand from the Court requires an assessment of the registrability
of the applied-for mark under the standard stated in the Court’s decision, it is
appropriate to remand the application to the Examining Attorney for further
examination applying that standard. Thus, the application is remanded to the
Examining Attorney.
Additionally, as noted in the Board’s final decision, “in the event Applicant
successfully appeals this decision, the application will need to be remanded for
further examination to ensure compliance with the requirements for a complete
application and acceptable specimens in support of registration pursuant to 37 C.F.R.
§§ 2.32(a)(8) and 2.56 et seq.”3 During prosecution of the application, the Examining
Attorney required an amendment to the mark description and suggested in pertinent
part “… as applied to product packing for the goods. The dotted lines function solely
to indicate placement of the mark on the packaging.”4 Applicant subsequently
amended the description of its mark to the “dotted lines merely depict placement of
the mark on the packing backer card” [emphasis added].5 This language may serve to

3 See In re Forney, 127 USPQ2d at 1788, n. 3. We note that the Federal Circuit took “no
position on whether Forney’s use of the mark in commerce, as shown by its submitted
specimens, is consistent. As the parties themselves recognize, that issue is not before us, and
is properly considered by the examining attorney in the first instance. See Oral Arg. at 4:22-
5:25; see also Appellee’s Br. 5 n.3.” In re Forney, 2020 USPQ2d 10310 at **7, n. 2.
4 September 16, 2014 Office Action, TSDR at 3.
5 Applicant’s March 17, 2015 Response to Office Action, TSDR at 18.
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restrict the placement of the mark such that the specimens filed with Applicant’s
application for goods in Classes 6 and 17 may not be acceptable as they do not appear
to be “packing backer card” specimens.6 Thus, the Examining Attorney should review
Applicant’s compliance with the requirements for a complete application and
acceptable specimens in support of registration pursuant to Trademark Rules
2.32(a)(8) and 2.56 et seq., 37 C.F.R. §§ 2.32(a)(8) and 2.56 et seq.
Because the remand to the Examining Attorney includes, in addition to the issue
identified by the Court of Appeals, an additional issue the Board previously noted
concerning registrability, this remand is to be conducted in accordance with
Trademark Rule 2.142(f)(1), 37 C.F.R. § 2.142(f)(1). The Examining Attorney must
issue an Office action within 60 days from the date of this order. The Examining
Attorney may request an extension of this period if additional time is needed.
If the Examining Attorney determines that refusal(s) of registration in response
to matters addressed herein are appropriate, a non-final Office action should be
issued.7 Applicant is then allowed an opportunity to respond and rebut the
Examining Attorney’s showing. If the refusal is ultimately made final, the Examining

6 A “packing backer card” refers to part of the packaging for Applicant’s goods; we understand
the term to refer to the cardboard on which Applicant’s products are mounted for display and
sale.
7 The Examining Attorney is advised that the Office action should include the customary six-
month paragraph noting Applicant’s options, but any subsequent final Office action should
not include that paragraph. Rather, it should explain that the file will be returned to the
Board for resumption of the appeal in accordance with this order.

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Attorney should return the file to the Board, which will then allow time for
supplemental briefing of the issue(s) remaining.
The appeal is suspended, and the application is remanded to the Examining
Attorney for further examination in accordance with this order.

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