Presented by Kyle Coleman
In an opinion by Judge Arnold, the Eighth Circuit affirmed the Northern District of Iowa and held that the chartreuse color of Weems's water hoses is functional: it makes the hoses more visible and therefore safer, a utilitarian advantage that renders the color ineligible for trademark protection under the functionality doctrine. The court affirmed cancellation of Weems's color registration and dismissal of its Lanham Act and Iowa common-law claims. It also affirmed the district court's determination that the case was exceptional under 15 U.S.C. 1117(a) and its award of more than three million dollars in attorney's fees, based on Weems's lack of candor before the USPTO, its trial conduct, and its continued misapplication of the functionality standard.
Weems Industries v. Teknor Apex, decided July 30th, 2026. A unanimous panel of the Eighth Circuit, in an opinion by Judge Arnold, affirmed the Northern District of Iowa. The court held that the color chartreuse applied to Weems's water hoses is functional — it makes the hoses more visible, and therefore safer — and so cannot be protected as a trademark. It affirmed cancellation of Weems's registration and an award of over three million dollars in attorneys' fees. Here's the brief.
Weems Industries and Teknor Apex both make and sell water hoses. Weems held a federal registration for the color chartreuse as applied to the body of its water hoses. When Teknor introduced fluorescent green and fluorescent yellow hoses, Weems sued, claiming the hoses infringed its registered mark. It brought federal claims under the Lanham Act and related claims under Iowa common law.
Teknor countered that the district court should cancel Weems's registration and dismiss its claims. After a bench trial, Judge Leonard Strand of the Northern District of Iowa issued a thorough opinion agreeing with Teknor. The court held the mark invalid on two independent grounds — that chartreuse on water hoses is functional, and that the color had not acquired distinctiveness. Either was sufficient to cancel the registration. So the court canceled the registration, dismissed Weems's claims, and awarded Teknor attorneys' fees, finding the case exceptional. Weems appealed the cancellation and the fee award.
The appeal presented two questions: whether the color of Weems's hoses is functional, and whether the district court could deem the case exceptional.
A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects its cost or quality. That standard comes from TrafFix Devices and Qualitex. A functional feature is the province of patent law, not trademark law, so that competitors may use the innovation rather than face a perpetual monopoly. Whether a feature is functional is a factual finding, reviewed for clear error, and a mark on the principal register carries a rebuttable presumption of validity and non-functionality.
On fees, the Lanham Act lets a court award attorneys' fees to a prevailing party in exceptional cases. Under Octane Fitness, an exceptional case is one that stands out from others — in the strength of a party's litigating position, or the manner in which the case was litigated. That award is reviewed for abuse of discretion.
On functionality, the court held the district court did not clearly err in finding the presumption of validity firmly rebutted. Most important, Weems itself had touted the functional advantage of its hoses' color. It directed sales representatives and marketing agencies to emphasize that the color made the hoses highly visible and thus safer, preventing tripping accidents, and it stressed that safety benefit in its advertising and on its packaging. And a seller's promotion of a feature's utilitarian advantages, the court noted, is strong evidence that the feature is functional.
Weems argued that a feature is functional only when it improves how the goods operate, and that color does not make a hose work better. The court found no legal support for that narrow view.
On the fee award, the court identified three circumstances: Weems's lack of candor before the Patent and Trademark Office, where it downplayed the color's safety function even as it promoted that function in the market; its trial conduct, including meritless objections to most of Teknor's exhibits and testimony the district court found incredible; and its continued misapplication of the functionality standard. The court found no abuse of discretion.
Weems is this series' first regional-circuit decision, and it binds only within the Eighth Circuit. Doctrinally, it confirms that a color serving a genuine utilitarian purpose — here, visibility and safety — is functional and cannot be claimed as trade dress, however strongly it may identify a source. The court applied the traditional TrafFix standard: a feature that affects a product's quality is functional even if a competitor could achieve the same effect with another design. And the decision illustrates that overreaching enforcement of a functional mark, paired with a lack of candor before the Patent and Trademark Office, can render a case exceptional and expose the owner to a substantial fee award.
Weems Industries v. Teknor Apex Company, Numbers 24-3608 and 25-2956, decided by the Eighth Circuit on July 30th, 2026. I'm Kyle Coleman. Thanks for watching.
These videos are educational case briefs, not legal advice, and watching them does not create an attorney-client relationship with the presenter or the firm. Case law and its interpretation evolves, always check a decision's subsequent history. Do not rely on these case briefs, but read the case yourself or have your attorney read them. Videos are presented via an AI avatar and voice clone of Kyle Coleman, created with his participation and consent.
