RESPONDENT: Jacobson Products Company, Inc.
LOCATION: U.S. District Court for the District of New Mexico
DOCKET NO.: 93-1577
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Ninth Circuit
CITATION: 514 US 159 (1995)
ARGUED: Jan 09, 1995
DECIDED: Mar 28, 1995
Donald G. Mulack - on behalf of the Petitioner
Lawrence D. Strick - on behalf of the Respondent
Laurence D. Strick - for respondent
Lawrence G. Wallace - on behalf of the United States, as amicus curiae, supporting the Petitioner
Facts of the case
Media for Qualitex Company v. Jacobson Products Company, Inc.
Audio Transcription for Opinion Announcement - March 28, 1995 in Qualitex Company v. Jacobson Products Company, Inc.
William H. Rehnquist:
The opinion of the court order number 93-1577, Qualitex Company against Jacobson Products will e announced by Justice Breyer.
Stephen G. Breyer:
In this case, Qualitex is a company that makes press pads for dry cleaning services and they color them special green gold and people began to associate the green gold with the Qualitex Company and they trademarked that color.
Somebody else began to imitate the pads, the defendant, and then Qualitex sued them for trademarking infringement.
The Ninth Circuit held that a color, pure and simple cannot be a trademark and that was the issue that we had to decide.
We decided that a color, pure and simple can sometimes be a trademark.
Our reason basically as we look at the statute, it spells that trademark can include any word, name, symbol or device and that seems to me almost anything.
Also, it’s true that in the past, shapes and sounds like the NBC chimes and even a smell has sometimes been a trademark.
It fits within the rest of the definition that is, it can pick out and distinguish a product and put in people’s mind the fact that product is associated with the particular company and so it can serve the purpose of trademark law and also at some point, sometimes a color wouldn’t necessarily serve our function because if it serves a function other than just identifying the company, it can’t be a trademark.
So, it seems to qualify.
Now, the Ninth Circuit thought there was special reason to involving colors, would prevention from being trademarks such as that’ll be hard to distinguish one from the other, but lots of things are hard to distinguish one from the other.
They thought there are limited supply of colors, but actually there are many and the doctrine of functionality makes certain that colors can still be used to make things beautiful or serve other functions and trademark, well, won’t tie them up and we look into the history of the statute and thought in historical terms to, it’s meant to apply to colors and for that reason we reverse the Ninth Circuit and our opinion is unanimous.