The Eighth Circuit Court of Appeals recently ruled in favor of Teknor Apex Company, affirming the cancellation of Weems Industries, Inc.'s trademark for the color chartreuse as applied to water hoses. This decision, filed on July 30, 2026, impacts both companies, as it allows Teknor to continue selling its fluorescent green and yellow hoses without infringing on Weems's trademark. The ruling is significant because it clarifies the legal standards surrounding trademark functionality and distinctiveness.
Weems Industries, which operates as Legacy Manufacturing Company, and Teknor Apex are both manufacturers and sellers of water hoses. The dispute began when Teknor introduced its own fluorescent green and yellow hoses, prompting Weems to file a lawsuit claiming that Teknor infringed on its registered trademark for the color chartreuse. Weems based its claims on federal law under the Lanham Act, as well as related Iowa common law. In response, Teknor argued that Weems's trademark registration should be canceled and sought to dismiss Weems's claims.
The case reached the Eighth Circuit after a bench trial in the Northern District of Iowa, where the district court ruled in favor of Teknor. The court found that Weems's trademark was invalid because the color chartreuse was functional and had not acquired the distinctiveness necessary for trademark protection. The district court also awarded Teknor attorneys' fees, which Weems appealed.
In its ruling, the Eighth Circuit upheld the district court's decision, stating, "We conclude that the district court did not clearly err in holding that the color of Weems’s hoses was functional and so could not be trademarked." The court emphasized that a product feature is considered functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the product. The judges noted that Weems had actively promoted the safety benefits of its fluorescent hoses, which made them more visible and thus safer to use.
The court further explained that Weems's claims were weakened by its own marketing practices. The judges stated, "If a seller advertises the utilitarian advantages of a particular feature, this constitutes strong evidence of functionality." The Eighth Circuit agreed with the district court's assessment that Weems's promotion of the chartreuse color as a safety feature demonstrated its functional nature.
Additionally, the court addressed Weems's argument that the color chartreuse did not improve the operation of the hoses. The Eighth Circuit rejected this narrow interpretation of functionality, asserting that the color's visibility contributed to the overall quality and safety of the hoses. The judges pointed out that evidence from patents and expert testimony supported Teknor's claim that the color chartreuse enhances visibility, which is a functional advantage.
The Eighth Circuit also upheld the district court's award of attorneys' fees to Teknor, which exceeded three million dollars. The court explained that the Lanham Act allows for such awards in exceptional cases. The judges noted that the district court found Weems's conduct before the United States Patent and Trademark Office (USPTO) and during the trial to be exceptional due to a lack of candor and unreasonable litigation tactics.
The district court determined that Weems had misled the USPTO by downplaying the functional benefits of the chartreuse color while simultaneously promoting those benefits in its marketing materials. The Eighth Circuit agreed, stating, "We discern no abuse of discretion in the court’s conclusion that these three circumstances make this case exceptional under § 1117(a)." The judges emphasized that Weems's actions had a significant impact on the case and justified the fee award.
This ruling has broader implications for trademark law, particularly regarding the functionality doctrine. It reinforces the principle that a feature cannot be trademarked if it serves a functional purpose, which is crucial for maintaining competition and innovation in the marketplace. The Eighth Circuit's decision clarifies that companies must be cautious when claiming trademark rights over product features that provide functional advantages.
Moving forward, this ruling may influence how companies approach trademark registration and enforcement, particularly in industries where product features are closely tied to functionality. It serves as a reminder that trademark protection is not absolute and that companies must be prepared to defend their claims against challenges based on functionality.
As for what’s next, Weems may consider appealing the Eighth Circuit's decision to the Supreme Court, although it is unclear whether such an appeal will be pursued. There are no related cases currently pending that directly address this issue.