If there is consideration of functionality for the color of any product, then it cannot be provided with protection or registration of a trademark. The mark of inherent distinctiveness is preferred to be marked on the basis of secondary meaning, due to a number of reasons. The rights attached for the marks of inherent distinctive is related to initial utilization, but the rights are attached in the mark of secondary meaning only acquiring distinctiveness. In a number of cases, this can lead to questioning priority.
The mark of a plaintiff may have an earlier date of initial utilization in comparison with the mark challenged; however, if the mark challenged was utilized before the mark of distinctiveness was acquired by plaintiff, there may be lack of luck for the plaintiff. In the more general sense, a mark of inherent distinctiveness is considered as stronger in comparison with the mark acquiring distinctiveness by utilization. Several courts of USA have been dealing with the issue, and colors can be identified as functional for a number of purposes. Considering the case of Qualitex Co. v. Jacobsen Products Co. Inc. was a case considered by the supreme court of United States within which the Court considered holding that a color will consider meeting the lawful requirements for registration of trademark within the Lanham Act.
This is under the provision that there has been acquiring of secondary meaning within the market. The plaintiff in this case had been using the color of green gold in the pads initiated for sale across firms of dry cleaning using the respective presses. Jacobson Products Co., also the competitor of Qualitex, was the defendant in the case. In the year 1989, Jacobson started to sell their own pads to the client base which seemed to have more or less the same color used by Qualitex. Also, considering the case of Wal-Mart vs. Samara Bros, the decision was taken by the court regarding the key circumstance under which the design of a product can be considered distinctive, and hence, can be protected, under the action of infringing unregistered dress of trade under section 43 (a) of the Trademark Act of 1946. Samara Brothers Inc., being the respondent has been designing and manufacturing a line of clothing for children.