The US Court of Appeals for the Eighth Circuit affirmed cancellation of a trademark covering chartreuse-colored water hoses, finding that the color was functional because it improved visibility and therefore enhanced safety. The Court also affirmed a $3 million attorneys’ fee award based on the trademark owner’s lack of candor before the United States Patent & Trademark Office (USPTO), litigation conduct, and continued reliance on an incorrect interpretation of the functionality standard. Weems Industries, Inc. d/b/a Legacy Manufacturing Co. v. Teknor Apex Co., Case No. 25-2956 (8th Cir. July 30, 2026) (Colloton, Arnold, Grasz, JJ.)
Weems Industries sued competing water hose manufacturer Teknor Apex for trademark infringement and other claims. Weems asserted a federally registered trademark covering the chartreuse color used on its water hoses. Teknor countered that the color was functional and sought cancellation of the registration. Teknor also requested attorneys’ fees.
The district court agreed with Teknor, finding that chartreuse served a functional purpose because the bright color made hoses more visible against dark grass and therefore improved product safety. The district court also concluded that Weems had not established acquired distinctiveness in the color. It cancelled the registration and awarded Teknor approximately $3 million in attorneys’ fees. The district court based the fee award on three categories of conduct: Weems’ lack of candor before the USPTO, its conduct during the litigation and trial, and its continued reliance on an incorrect interpretation of trademark functionality. Weems appealed.
The Eighth Circuit reviewed the district court’s functionality determination for clear error. A product feature is functional and therefore not subject to trademark protection if it is essential to the product’s use or affects the product’s cost or quality. The Court explained that a feature that improves product safety may affect product quality and therefore be functional.
The record contained substantial evidence supporting the district court’s finding that chartreuse improved hose visibility. Weems’ own promotional materials described the visibility and safety benefits of the color. The record also included patent-related materials describing the utility of chartreuse and expert testimony addressing the color’s visibility.
The Eighth Circuit rejected Weems’ argument that a feature is functional only if it improves the mechanical operation of the product. Functionality, the Court explained, is not limited to whether a feature makes a product operate better. A feature that improves safety can also affect product quality and therefore fall within the functionality doctrine.
The Court also rejected Weems’ argument that chartreuse should remain protectable because Teknor could have selected a different highly visible color for its hoses. The availability of alternative colors did not require a competitor to design around a functional safety feature. Because the Court affirmed the finding that chartreuse was functional, it did not need to address whether the color had acquired distinctiveness.
The Eighth Circuit next considered the attorneys’ fee award. The Lanham Act permits fee awards in “exceptional cases,” which courts evaluate based on the totality of the circumstances. A case may be exceptional because of the substantive weakness of a party’s position or because of the manner in which the case was litigated. The Court reviewed the fee award for abuse of discretion.
The Eighth Circuit first upheld the district court’s finding that Weems had failed to disclose marketing materials to the USPTO that described the safety benefits of the chartreuse color. Internal communications supported the conclusion that Weems understood the potential significance of those materials and intentionally withheld them. The fact that the district court had previously ruled against Teknor on a related summary judgment issue did not prevent it from considering Weems’ conduct when later evaluating attorneys’ fees.
The Eighth Circuit also upheld the district court’s findings concerning Weems’ litigation conduct. According to the district court, Weems objected without adequate basis to most of Teknor’s exhibits, and key Weems witnesses gave false testimony at trial. The Eighth Circuit also noted that the district court had accounted for Teknor’s own conduct by reducing the requested fee award by 20%.
Finally, the Eighth Circuit agreed that Weems had persisted in advocating an unduly narrow interpretation of functionality that focused on whether the color improved the hose’s operation rather than its safety or quality.
Considering the case as a whole, the Eighth Circuit concluded that the district court did not abuse its discretion in finding the case exceptional or in awarding approximately $3 million in fees. The Court found a sufficient connection between Weems’ misconduct and the litigation, reasoning that the lack of candor helped preserve a trademark registration that should not have remained in force and led to litigation that otherwise could have been avoided.
