“[A] ‘generic' term names a ‘class' of good or services, rather than any particular feature or exemplification of the class.” United States PTO v. Booking.com B.V., 591 U.S. 549, 556 (2020). The Federal Circuit applies the two-step test set forth in H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986) (“First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?”). 

For a color mark, the TTAB applies a variation of the Marvin Ginn test set forth in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (TTAB Dec. 2, 2019): 

We further believe it is appropriate to apply a two-step inquiry to determine genericness of a single color similar to the inquiry we would apply to word marks and other kinds of trade dress, where we [(i)] first consider the genus of goods or services at issue, and [(ii)] second consider whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services. . . . Accordingly, we will identify the appropriate genus of goods and then determine whether the color . . . is so common within the relevant genus that consumers would primarily associate it with the genus rather than as indicating a unique source of goods within the genus.

Id. at *9.

The Federal Circuit now has adopted the Milwaukee test for color marks. In re PT Medisafe Technologies, No. 23-1573, __ F.4th __ (Fed. Cir. Apr. 29, 2025). 

Whereas H. Marvin Ginn asks whether “the term sought to be registered or retained on the register [is] understood by the relevant public primarily to refer to [a] genus of goods or services,” 782 F.2d at 990 (emphasis added), Milwaukee asks “whether the color sought to be registered . . . is understood by the relevant public primarily as a category or type of trade dress for [a] genus of goods or services,” 2019 WL 6522400, at *9 (emphasis added).

The Federal Circuit held that the Milwaukee test is "entirely consistent" with H. Marvin Ginn.

Here, the genus of goods was defined as “chloroprene medical examination gloves” (Medisafe had sought to limit the goods to gloves sold only to authorized resellers, but the Board was not compelled to accept that limitation to the genus); and the Federal Circuit found there was substantial evidence supporting the Board's finding that Medisafe's color mark is so common in the chloroprene medical examination glove industry that it cannot identify a single source and is, therefore, generic. This evidence included screenshots of third-party websites showing unaffiliated sellers of chloroprene/neoprene medical examination gloves in the same or nearly the same dark green color as in the proposed mark. 

Thus, the Federal Circuit affirmed the Board's determination that Medisafe's proposed mark is generic and, hence, ineligible for either the principal or supplemental registers.