Wednesday, September 12, 2007

Trademarked Colors – The tale of two trademark registrations for colors

Do you recognize either of these products? The unique colors on these two goods are both registered trademarks as of September 11, 2007.

The first one is the grey and yellow handle scissors manufactured by Acme United Corporation. Reg. # 3290520 (for scissors) on the Principal Register.

Contrast this to the second picture, which anybody who owns a pool (myself included) may recognize. The blue bottle with yellow cap is the container for Hach Company’s Aquacheck pool chemical testing strips. Reg. # 3292471 (for chemical test strips) on the Supplemental Register.

These two applications not only illustrate one of the hurdles faced by those claiming colors as a trademark, but also the difference between the Principal and Supplemental Register.

If a proposed color mark is not functional, it can be registered on the Principal Register with a showing of acquired distinctiveness or on the Supplemental Register. Because color marks are not inherently distinctive, they cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) (citing Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-163, 34 USPQ2d 1161, 1162-1163 (1995)); In re Thrifty, Inc., 274 F.3d 1349, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001); TMEP §1202.05(a).

Most applicants seek registration on the Principal Register because it provides such benefits as constructive notice, statutory damages, federal court jurisdiction, incontestability after 5 years of continuous use, ability to register the marks with the U.S. Customs and Border Protection, and presumption of validity. However, registration on the Supplemental Register has certain advantages as well, namely:

  • The registered trademark owner may use the registration symbol ®;
  • The registered mark is protected against registration of a confusingly similar mark under §2(d) of the Trademark Act;
  • The registered trademark owner may sue for trademark infringement in federal court; and
  • Registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
Acme decided to go the §2(f) route by arguing acquired distinctiveness in order to get its mark registered on the Principal Register. Acme argued that the mark had been continuously used in commerce for over five years. Acme also submitted eight sworn statements from sales executives from Applicant’s industry as further evidence that the mark had acquired distinctiveness. Finally, Acme cited to the myriad of knock-off scissors trying to copy the look of Acme’s scissors, which federal courts have held to be evidence of a mark’s acquired distinctiveness. Acme’s arguments must have been convincing because the mark was published for opposition on June 26, 2006, and registered on September 11, 2007.

Hach took the easy way, and amended the application to be on the Supplemental Register. After overcoming some issues regarding the submission of a drawing which show the colors as they will appear on the goods, the mark was registered on September 11, 2007 (since marks on the Supplemental Register are not published for opposition; see 37 CFR §2.82).