[co-author: Shana Olson]

The Ninth Circuit’s recent decision in Moldex-Metric, Inc. v. McKeon Products, Inc. clarifies that even when a single color trade dress has a function, and even when the color is marketed as such, this fact alone does not preclude trade dress protection.

Moldex-Metric, a manufacturer of earplugs tinted a particular shade of green, sued to enforce its trade dress against competitor McKeon Products. The district court granted Defendant McKeon’s summary judgment motion, finding Moldex’s trade dress unenforceable because the bright neon green color of the earplugs served a function by allowing supervisors of workers wearing the earplugs to confirm use from a distance. Moldex’s own advertisements touted the color's usefulness to industrial buyers.

Moldex appealed the summary judgment ruling; the Ninth Circuit reversed, finding that the district court erred in failing to assess the essentiality of the green color versus any color to the functionality of the earplugs. Citing the Supreme Court’s Qualitex Co. v. Jacobson Products Co. decision, the Ninth Circuit framed the functionality analysis in terms not just whether the color served a function, but also whether that particular color was essential to achieving the function — whether allowing one party exclusive use of a color in connection with a product would put competitors at a significant disadvantage. For earplugs, any bright color is likely to serve the same function – the green color in particular is not essential.

The takeaway from this decision for those looking to enforce color marks is that single color claims do not necessarily fail because a color serves a function, nor do they fail just because a color has been touted as functional.