June 11, 2025

In re PT Medisafe Technologies, 134 F.4th 1368 (Fed. Cir. April 29, 2025), finds the Court adopting the “Milwaukee test” to determine genericness of a color mark.  The test takes its name from Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (T.T.A.B. Dec. 2, 2019) (precedential). PT Medisafe, 134 F.4th at 1372.  The Court described it as a “slight variation” of the two-step genericness test articulated in H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986) (“H. Marvin Ginn”), that the TTAB tailored to the genericness analysis of color marks. Id.

The Milwaukee test begins with the same inquiry as H. Marvin Ginn, requiring the identification of the genus of goods or services at issue. 134 F.4th at 1374.  Slightly modifying the second step of the H. Marvin Ginn inquiry, it then asks whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for a genus of goods or services. Id. at 1374-75 (noting step two of the H. Marvin Ginn test asks whether the term sought to be registered or retained on the register is understood by the relevant public primarily to refer to a genus of goods or services).

In this case, Medisafe sought registration of a green color mark for “chloroprene examination gloves” on the principal and, alternatively, supplemental registers. 134 F.4th at 1371-72.  The examining attorney refused registration on either register after finding the proposed color mark generic under the H. Marvin Ginn test. Id.  The examining attorney also concluded the mark was not shown to have acquired distinctiveness.  Medisafe appealed to the TTAB. Id.

The TTAB used the Milwaukee test to determine whether Medisafe’s proposed color mark was generic. 134 F.4th at 1372-73.  At step one, the genus of goods at issue was found to be “chloroprene medical examination gloves.” Id.  At step two the TTAB said the relevant public included “all such people or businesses who do or may purchase chloroprene medical examination gloves.” Id.  Considering the entire record, the TTAB agreed the color mark was generic because it “is so common in the chloroprene medical examination glove industry that it cannot identify a single source.” Id.  Although the genericness finding operated as an absolute bar to registration, the TTAB also considered whether the mark acquired distinctiveness. Id.  It held Medisafe failed to meet its burden on this issue and went on to affirm the examining attorney’s refusal to enter the mark on either register. Id.

Appealing to the Federal Circuit, Medisafe primarily argued: (1) the TTAB applied the wrong legal standard for assessing whether a color mark is generic and (2) the TTAB’s genericness finding is not supported by substantial evidence. 134 F.4th at 1374.  Addressing Medisafe’s legal standard challenge, the Court first discussed the H. Marvin Ginn and Milwaukee cases. Id.  It noted that genericness of color marks was not expressly considered in H. Marvin Ginn, but the legal standard set forth therein applies to “marks” without limitation as to their type. Id.  It concluded, though, that the Milwaukee test is “entirely consistent” with H. Marvin Ginn and “minimally, but appropriately, modifies H. Marvin Ginn to address the specific circumstances of a color mark being assessed for genericness.” Id. at 1374-75.

Medisafe’s main argument that the Milwaukee test ignores the statutory language in 15 U.S.C. § 1064(3) that permits cancellation of a mark for genericness only where the mark is a “generic name” was unpersuasive. 134 F.4th at 1375.  Medisafe argued this statutory requirement applies equally to all type of marks such that trade dress—including a color mark—can, like a word mark, be found generic only if it is a “generic name” for the goods with which it is used. Id.  The Court explained it considered and rejected essentially this same argument in Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999). Id.  The Court reiterated its holding in Sunrise Jewelry that “‘trade dress,’ including a color mark, ‘that cannot serve as an indicator of source is generic and unprotectable.’” Id. (quoting Sunrise Jewelry, 175 F.3d at 1326).

Turning to the genericness finding itself, the Court applied the Milwaukee test and concluded substantial evidence supported the finding. 134 F.4th at 1375-76 (discussing the record and TTAB findings).  The Court explained that, as the TTAB recognized, “while a color mark may serve as a source indicator, substantial evidence supports the [TTAB’s] finding that Medisafe’s proposed mark failed to do so.” Id. (quoting this statement from the TTAB’s decision: “There is no question that color marks generally are capable of serving as source-indicators – that is not the ground for refusal here. Rather, the relevant inquiry focuses on the consumer perception of the particular color at issue as to the genus set by Applicant's identified goods.”).

The Court thus affirmed the determination that Medisafe’s proposed mark is generic and ineligible for registry on either the principal or supplemental registers. 134 F.4th at 1376.  The Court declined to reach Medisafe's challenges to the finding that it failed to prove acquired distinctiveness, and stated, “Because a generic mark is ‘the ultimate in descriptiveness,’ it ‘cannot acquire distinctiveness.’” Id. at 1377, n.8 (quoting precedent).