The Color That Testified Against Its Owner

On January 12, 2011, a Weems Industries executive wrote an email about a product label. The label accurately described what the company’s fluorescent yellow-green hose was supposed to do. Its accuracy created the problem.

In stores, catalogs, and sales materials, Weems promoted the color as “Hi-Vis Safety Green,” telling buyers that it made the hose easier to see and helped prevent tripping accidents. In the email, that same claim threatened the registration. A competitor, the executive warned, could send one of those labels to the trademark office, which would then “take away” the registration. Obtaining a trademark in a color was a “hail mary pass.”

The label sold the hose by advertising a safety benefit. That same benefit made the color useful and kept Weems from reserving it for itself.

Weems later obtained a federal registration for chartreuse applied to the exterior of a water hose. When Teknor Apex introduced fluorescent green and fluorescent yellow hoses, Weems sued for trademark infringement and related violations. After a bench trial, Judge Leonard T. Strand canceled the registration. On July 30, 2026, the United States Court of Appeals for the Eighth Circuit affirmed.

Federal law can protect a color when buyers use it to identify the maker and the color serves no significant practical purpose. Chartreuse made the hose easier to see and avoid. That safety benefit remained useful even if buyers associated the color with Flexzilla.

Weems’s own labels and emails contained the proof. The company told customers that visibility made the hose safer, told the trademark office that the visibility was incidental, and later asked a federal court to reserve chartreuse for Flexzilla. Those statements had been in the company’s files for years.

The Word on the Label

Flexzilla began as an air hose. During development, Weems wanted a highly visible color that would reduce the risk of people tripping over hoses in a workplace. The company first described the color as highlighter yellow and later moved toward the fluorescent yellow-green it called chartreuse. When Flexzilla expanded into water hoses, the color followed.

In March 2009, Weems’s vice president and marketing director told the marketing department to present high visibility as one of the hose’s features. Weems repeated the claim on packaging, in product databases and catalogs, in retailer advertisements, and during sales training. Some materials said directly that the color helped prevent tripping accidents.

By telling customers that chartreuse helped prevent trips, Weems had already described the useful work the color performed.

On a floor, lawn, or job site, a more visible hose was easier to avoid. Water pressure and flow stayed the same. The bright color helped people see the hose sooner and step around it.

Two Accounts of the Same Color

Weems first applied in 2009 to register chartreuse for air hoses. The examining attorney refused the application and asked whether the color served any practical purpose. The office also asked for advertising about the color and warned that increased visibility could make a color functional.

At the time, Weems was actively marketing visibility as a safety benefit. Its response left out those materials. Weems sent other advertising and told the office that the extra visibility was “purely incidental” and that chartreuse identified Flexzilla as the source.

The district court found that the omission was part of a longer effort to strip high-visibility language from company materials. Employees were told to remove references to the safety function. Years later, as Weems sought registration on the Principal Register, the company again worked to delete language that could hurt the application.

The Eighth Circuit treated the pattern as deliberate. The internal email explained why the company wanted the old language gone. A competitor could send an accurate label to the trademark office and expose the problem with the registration.

Weems ultimately secured Registration No. 5,293,921 for chartreuse applied to the entire exterior surface of a water hose. The registration carried a presumption of validity, so a competitor had to prove the mark invalid.

Teknor put the old labels, internal emails, patent materials, and expert testimony before the court. The judge saw evidence the examiner had never received and found chartreuse functional.

What Quality Includes

Supreme Court doctrine treats a product feature as functional when the feature is essential to the product’s use. The same rule applies when the feature affects the product’s cost or quality. Patents can protect useful inventions for a limited time. Trademarks can last indefinitely. The functionality rule prevents one company from using trademark law to control a useful product feature forever.

Weems argued that functionality should turn on the hose’s mechanics—pressure, kinking, wall strength, and water flow. Chartreuse changed none of them, so Weems said the color was not functional.

The Eighth Circuit rejected that narrow view. A hose can be better because it is safer, and a bright color can make it safer by helping people see and avoid it. The color performed useful work even though the hose carried water the same way.

A feature can also organize information, reduce errors, improve handling, signal size, or increase visibility. Trademark law cannot give one company permanent control over those practical benefits.

Weems also pointed to other bright colors that Teknor could use. The court held that competitors did not have to search for substitutes. Chartreuse affected the hose’s quality and therefore remained functional.

Even if consumers associated chartreuse with Flexzilla, the color still made the hose easier to see and safer to use. That function barred trademark protection.

The Evidence Outside the Hose Aisle

Teknor also introduced patents that used fluorescent yellow-green or chartreuse to make road signs, softballs, and other objects easier to see. A color expert explained why the color stands out, including in low light. Weems’s own expert agreed that yellow-green is highly visible.

Weems argued that the patents had nothing to do with hoses. The court found them relevant because fluorescent greens and yellows remain highly visible on many kinds of objects. The patents showed that the advantage was familiar; Weems’s own marketing showed that it applied to hoses.

The Eighth Circuit agreed with the district court. Teknor had shown that chartreuse made hoses easier to see and safer to avoid, so the federal registration could not stand. Whether buyers linked the color to Weems made no difference. The color still performed the same safety function.

When the Case Became Exceptional

After canceling the registration, the district court turned to Teknor’s request for attorneys’ fees.

Under the Lanham Act, a prevailing party can recover fees when a case stands out. An especially weak claim, unreasonable litigation conduct, or other unusual circumstances can make a case exceptional.

Judge Strand gave three reasons. First, Weems had withheld the visibility-centered advertising the USPTO requested, had worked to remove the same language from company materials, and had described visibility one way to customers and another way to the government. Second, Weems objected to more than 700 of Teknor’s exhibits—roughly 85 percent of them. The judge wrote that many reflected “no rational thought, or thought of any kind.” He also found important testimony from Weems’s principal officers “plainly incredible.”

Third, Weems kept treating mechanical operation as the only measure of functionality, even after the court explained that safety could affect quality.

Teknor had separately accused Weems of fraud, alleging that the company falsely claimed exclusive use of chartreuse. The district court rejected that claim. The fee ruling rested on different conduct: withholding requested advertising and minimizing the safety value of visibility. The Eighth Circuit held that the judge could consider that lack of candor when deciding fees.

The district court reviewed Teknor’s hours and rates, removed specific billing entries, and then cut the total by 20 percent because Teknor had committed discovery misconduct of its own. It awarded $3,069,047.51 in attorneys’ fees and $145,161.02 in nontaxable expenses, a total of $3,214,208.53. The clerk separately taxed $65,584.41 in costs.

Weems argued that the award punished the company for conduct that had not caused Teknor’s fees. The Eighth Circuit disagreed. The registration allowed Weems to bring and maintain the lawsuit, and the objections and narrow reading of functionality increased the work required to defend it.

The Feature Remained Useful

A color can receive trademark protection when consumers use it to identify a single source and the color serves no practical function. A company cannot reserve a color that makes the product safer or otherwise better.

A company’s own marketing can later become evidence of what a feature does. A claim that a color improves safety, visibility, efficiency, durability, or ease of use may help sell the product—and may also show why competitors must remain free to use the feature.

Weems told customers that chartreuse made its hoses easier to see. The labels documented a real safety benefit. Calling visibility “purely incidental” before the USPTO could not erase what the company had already told buyers.

The same word carried three roles. “Safety” drove sales, became incidental in the application, and disappeared from the defense of the mark. The courts read those statements as one record.

The Eighth Circuit looked past the competing descriptions and asked what the color did. Weems had answered that question years earlier.