Qualitex Co. v. Jacobson Products: The 90-Year Fight Over Whether a Color Can Be a Trademark

A dry cleaning company’s dispute over the green-gold color of its press pads reached the Supreme Court in 1995, and the ruling that followed gets cited constantly in fashion law today, usually as the foundation underneath the Louboutin red sole case. What rarely gets mentioned is that the Court wasn’t deciding a new question at all. It was finally closing a fight that had been running, unresolved, for almost ninety years. This is the Qualitex Co. v. Jacobson Products case.

1906: A Wire Rope and a Doubt That Lasted Decades

The doubt started in a case with nothing to do with fashion. In A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., the Supreme Court considered a claimed trademark consisting of a red streak woven into wire rope, and under the Trademark Act of 1881, the Court found the claim too indefinite to register. The opinion only expressed doubt rather than issuing a firm rule, stating that whether mere color could ever constitute a valid trademark “may admit of doubt.” That single line of dicta, never actually a binding holding, became the seed courts cited for the next eighty years whenever a company tried to claim a color as its own.

Qualitex Co. v. Jacobson Products: The Color Depletion Theory Takes Root

Lower courts spent the following decades turning that doubt into something closer to an outright ban. The Sixth Circuit articulated what became known as the color depletion theory in a 1906 case, reasoning that only a limited number of colors exist, and letting individual companies monopolize them would eventually leave competitors with nothing left to choose from. The Third Circuit relied on the same logic in 1949, rejecting a color trademark on the theory that no company should hold exclusive rights to a primary color while rivals ran out of options. A second argument, the shade confusion theory, added that litigating over where one company’s shade of blue ended and a competitor’s began would make courts impossible to administer. Together, these two theories hardened into what practitioners called the mere color rule, treating Leschen’s passing doubt as settled law for most of the twentieth century.

1985: The First Real Crack in the Rule

The rule held until the Federal Circuit broke from it directly. In In re Owens-Corning Fiberglas Corp., decided in 1985, the court allowed Owens-Corning to register the color pink for its fiberglass insulation, holding that the broad 1946 revision of federal trademark law through the Lanham Act had never actually codified a categorical ban on color alone. The ruling discredited the old color depletion reasoning directly, noting that modern color-mixing technology produced far too many distinguishable shades for the theory to hold up. But the Federal Circuit’s decision created exactly the kind of split that eventually forces the Supreme Court’s hand. The Ninth Circuit, among others, kept treating color alone as categorically unregistrable, leaving companies with a trademark right in one part of the country and nothing in another.

The Press Pad That Forced the Supreme Court’s Hand

Qualitex had used a specific green-gold shade on its dry cleaning press pads since the 1950s, and registered that color as a trademark in 1991. When Jacobson Products began selling press pads in a similar shade, Qualitex sued for infringement. A district court ruled in Qualitex’s favor, but the Ninth Circuit reversed, applying its own circuit’s categorical rule that color alone could never function as a trademark, regardless of distinctiveness. That reversal deepened the exact split Owens-Corning had opened a decade earlier, and the Supreme Court granted certiorari specifically to resolve it.

The 1995 Ruling: Nine Justices Erase Ninety Years of Doubt

The Court’s decision, written by Justice Breyer, came back unanimous, a rare outcome on its own. The opinion held that the Lanham Act permits registration of a trademark that consists purely and simply of a color, provided the color has acquired secondary meaning, meaning consumers actually associate it with a single source, and provided the color is not functional, meaning competitors have no legitimate need to use that specific shade themselves. The Court dismissed the color depletion theory outright, reasoning that modern color science makes the fear of running out of usable shades implausible, and noted that the functionality doctrine already does the real work of preventing anyone from locking up a color competitors genuinely need. The shade confusion argument fared no better, since courts already resolve comparably fine grained disputes over similar word marks without declaring the entire category unworkable. The opinion also pointed out that the Patent and Trademark Office itself had already been registering color marks in combination with shapes and designs for years without the system collapsing into the chaos the mere color rule’s defenders predicted, which undercut the idea that color alone presented some uniquely unmanageable problem the rest of trademark law had somehow avoided. Ninety years after a single doubtful sentence about a wire rope, the Supreme Court answered the question Leschen had only ever raised.

Why the Ninety-Year Wait Still Shapes Fashion Law Today

Every modern fight over a single color in fashion runs through the test Qualitex built. When Christian Louboutin’s red sole reached the Second Circuit in 2012, the court applied the exact two-part Qualitex standard, finding the mark had acquired genuine secondary meaning while narrowing its protection to soles that contrast with the rest of the shoe. Neither the color depletion theory nor the old mere color rule ever resurfaced as a serious argument in that case, because Qualitex had already settled the only question that mattered nationally. The same two-part test now sits behind every brand’s claim to a signature shade, from a jewelry box’s particular blue to a luxury label’s particular sole, and each of those claims still has to clear the exact bar Qualitex set: real secondary meaning, and no legitimate competitive need for that specific color. The press pad dispute itself was never really about dry cleaning equipment. It was the final chapter of an argument the legal system had been putting off since 1906, and fashion brands have been building on that 1995 answer ever since.