A 2012 color trademark court desicion. Pay attention.

[WolfeMacleod]

This is of major importance right now. You all will want to pay attention to this. More details to come soon-ish.



https://www.foley.com/second-circuit...ks-09-05-2012/

Second Circuit Reverses Louboutin on Protection of Fashion Color Trademarks

In a major opinion issued on September 5, 2012, the Second Circuit held that Christian Louboutin’s red sole trademark for shoes is valid, but only when the red color contrasts with the color of the shoe upper. It rejected the District Court's holding that color per se could never be a valid trademark for fashion-related goods.

However, the court affirmed the refusal of a preliminary injunction against the monochromatic red shoes of defendant Yves St. Laurent (YSL) since these shoes lay outside the scope of protection for Louboutin's trademark. While Louboutin failed to obtain the relief it sought, the decision creates the basis for future enforcement against competitors who imitate the distinctive Louboutin contrasting red sole. More broadly, it also is a victory for trademark owners who seek to incorporate a nonfunctional color into their overall branding scheme.

The District Court’s opinion in Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011) had sparked wide criticism due to its sweeping holding on the protectability of color trademarks. Although the District Court acknowledged that the Louboutin red sole trademark was widely recognized and had acquired secondary meaning, it held the mark invalid, and ordered cancellation of Louboutin’s Federal registration, on the basis of aesthetic functionality. “There is something unique about the fashion world,” said the District Court, “that militates against extending trademark protection to a single color.” Louboutin, 778 F. Supp. 2d at 451.

Reversing on this point, the Second Circuit held that such a sweeping per se rule was contrary to the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), which mandates an “individualized, fact-based inquiry into the nature of the trademark.” In this case, said the Court, “Louboutin’s marketing efforts have created a “brand with worldwide recognition,” and “[b]y placing the color red in a context that seems unusual, and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand” (internal quotes and citations omitted).

The appellate court held that the doctrine of aesthetic functionality is a valid defense in the Second Circuit in cases “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market” (emphasis in original). A mark is aesthetically functional if granting exclusive protection to the feature “would put competitors at a significant non-reputation-related disadvantage,” citing TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001).

[WolfeMacleod]

John Deere Colors Might Be Aesthetically Functional
From BNA’s Patent, Trademark & Copyright Journal - Daily Edition (also available on Bloomberg Law)



By Anandashankar Mazumdar

Oct. 19 — A maker of lawn sprayers won the right to argue that John Deere's green-and-yellow color combination is functional because consumers like their equipment to be in matching colors, the U.S. District Court for the Western District of Kentucky ruled Oct. 14.

The federal district court refused to grant a motion to dismiss a counterclaim of aesthetic functionality by a Deere competitor who was sued for trademark infringement for selling green-and-yellow colored equipment.

Whether the color combination is functional is a question of fact that can be determined only after a full evidentiary proceeding, the court said, and not at the motion-to-dismiss stage.

Deere Holds Federal Registrations on Colors

Deere & Co. of Moline, Ill., the producer of heavy machinery founded in 1837, is best-known for agricultural equipment, such as tractors, sold under the “John Deere” brand name.

Deere claims interest not only in the name “John Deere” and its leaping-deer logo, but also in the green-and-yellow color combination, in which most of its products are painted.

Deere holds three federal trademark registrations for the combination for “wheeled agricultural, lawn and garden, and material handling machines,” tractors, and nutrient applicators.

Fimco Inc. of Dakota Dunes, S.D., sells agricultural equipment under the names “Fimco” and “Schaben Industries.” According to the court, Fimco is “the largest manufacturer of lawn and garden sprayers in the United States.”

Fimco uses various color schemes, including green and yellow, for its sprayers and other agricultural equipment.

Deere sued, alleging:

• trademark infringement under the Lanham Trademark Act of 1946, 15 U.S.C. §1114,

• false designation of origin and unfair competition under 15 U.S.C. §1125(a),

• trademark dilution under 15 U.S.C. §1125(c), and

•  trademark infringement under Kentucky state common law.



Aesthetic Functionality Doctrine Asserted

Fimco countered that Deere could not assert an exclusive right over the green-and-yellow combination, based on the doctrine of aesthetic functionality.

Under that theory, Fimco said that giving Deere the sole right to use green and yellow on such goods puts competitors “at a significant disadvantage because purchasers of agricultural products prefer to have equipment in colors similar to their tractors.”
Counterclaim Adequately Pleaded at this Stage

Deere moved to dismiss the aesthetic functionality counterclaim under Fed. R. Civ. P. 12(b)(6) for failure to state a claim for which the law offers a remedy.

However, the court noted that in 1982, a federal district court determined that “ ‘John Deere green' was aesthetically functional precisely because ‘farmers prefer to match their loaders to their tractor.' ” Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85 (S.D. Iowa 1982); aff'd 721 F.2d 253 (8th Cir. 1983).

Even though that case was about green alone— not the green-and-yellow combination—the court ruled that Fimco had sufficiently pleaded its aesthetic functionality defense to survive a Rule 12(b)(6) motion. According to the court, the issue of whether the color combination is functional in the same way that green alone was determined to be functional in 1982 is a question of fact that could not be determined at this stage.

The court's ruling was issued by Judge Thomas B. Russell.

Deere was represented by Dinsmore & Shohl LLP, Louisville, Ky. Fimco was represented by Koley Jessen P.C., Omaha, Neb.

[WolfeMacleod]

When the Color Black Functions, But Not as a Trademark

By Steve Baird on August 31st, 2010 Posted in Advertising, Branding, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks, TTAB

Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color black.

As we have discussed before, a single color can function as a trademark and be the basis of exclusive ownership, so long as it is not functional and has acquired distinctiveness for the goods in question. As it turns out, however, and as the billboard reminds me, due to some unique attributes of the color black, it is a tricky one to own as a trademark.

The tale begins back in 1988, after accumulating 25 years of use and allegedly "substantially exclusive" use in commerce, Mercury-Brunswick commenced efforts to register, own and exclude others from using the color black on the surface of internal combustion engines for boats.

As can tend to be the case when claiming exclusive rights in single colors or other non-traditional trademark rights, others within the industry who are paying close attention to what goes on at the Trademark Office come to life and consider getting in the way of these efforts.

British Seagull Ltd. did just that and filed an opposition lasting six years, ending with and resulting in the final rejection of Mercury-Brunswick’s claimed trademark rights in black, based on the functionality doctrine. You might be wondering, how on earth is the color black functional when applied to the entire surface of internal combustion engines for boats?

The longer answer can be found in two decisions: The decision of the Trademark Trial and Appeal Board (TTAB) in British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), and the decision of the Court of Appeals for the Federal Circuit (CAFC), affirming the TTAB’s registration refusal, in Brunswick Corporation v. British Seagull Limited, 35 F.3d 1527 (1994).

The shorter answer is "competitive need" as found in this excerpt from the TTAB’s decision:

[A]lthough the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats.

And the CAFC’s affirmance, here:

Turning to the present case, the Board determined that "black, when applied to [Mercury’s] outboard marine engines, is de jure functional because of competitive need." British Seagull, 28 USPQ2d at 1199. The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board’s legal reasoning and no clear error in its factual findings

So, it’s important to keep in mind this notion of competitive need when a business desires to own exclusive trademark rights in a color, and it is equally important to keep in mind as a defense when such rights are being asserted against your client’s use of a color.

And, when it comes to asserting or refuting a claim of exclusive trademark rights in the color black, it is well worth exploring competitive need by asking whether black’s unique attributes of color compatibility and/or visual perception have any application to your facts, since those facts already have been found to support a successful functionality defense.

[Richard]

This is interesting, I can't see the single color black as being a trademark but the green and yellow is definitely John Deere. How closely do colors have to match to be infringement? Black white and brown are considered neutral. As it pertains to DiMarzio Pickups, I personally don't associate the cream color with pickups; also cream is a standard generic color, used when the color is intended to not stand out.

[WolfeMacleod]

This is interesting, I can't see the single color black as being a trademark but the green and yellow is definitely John Deere. How closely do colors have to match to be infringement? Black white and brown are considered neutral. As it pertains to DiMarzio Pickups, I personally don't associate the cream color with pickups; also cream is a standard generic color, used when the color is intended to not stand out.

I don't recall how closely the colors must match, but I remember reading that it needs to be within a certain range of pantone colors... the problem is, Dimarzio's trademark is extremely vague and does not give a pantone color.

Fimco has won the right to argue that both the Deere Green and Yellow are functional under aesthetic functionality doctrine.

There's a reason I'm bringing this back into the light...

One of us is being sued.... I'm not at liberty to say who yet.

This CAN be won. And WILL be won, if enough people get involved. There are some major players getting involved.
When/if the lawsuit is won, the trademark will disappear. It will vanish into the ether.

In 2005, Dimarzio attempted another color trademark. It was REFUSED because guitars have chromed hardware, and some guitar have mirrored pickguard.

Here's some other reading..
http://harvardjsel.com/wp-content/up...LS105_crop.pdf

In its analysis of functionality in Qualitex, the Court refined the test articulated in Inwood and provided a more detailed explanation of how it might apply to future cases. The Court expanded upon
Inwood, finding a color functional “ ‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvan-tage.”

The Court highlighted the importance of promoting competition by not “allowing a producer to control a useful product feature.” This emphasis on competition elucidated why the doctrine of functionality exists: while trademark law should protect aspects of a product that serve to identify its source, it should not apply in such a way that allows one company to unjustly gain a monopoly, or even just a significant advantage, on the market for a product.

[Richard]

I guess it depends on the amount of each color, I wouldn't think a yellow tractor with green writing is a Deere. Most of this jibes with my (casual) understanding of trademark law. The rejection of the chrome trademark would seem to suggest that the cream trademark is BS. When chrome and creme pickups have been available (such as PAF's and P-90's, it seems silly to consider that a cream open coil humbucker could be considered unique, there were already cream pickup mounting rings and binding as well. I'm interested in how this plays out.

[John Kolbeck]

Suppose a fabric maker wanted to patent a certain color of fabric, so that whenever you see this fabric incorporated into a piece of clothing, you'll know it by the color. It would be argued that this is invalid due to "aesthetical functionality". Every conceivable color of fabric is functional. On the other hand, a whole article of clothing can have a trademarked color scheme, like a woman's shoe with red soles was trademarked. I think pickups should be thought of as the fabric, not the whole shoe.

Pickup makers do their best to make pickups out to be standalone products, but it would be easy to demonstrate that they are in fact a component of the guitar, and that their performance is dependent upon the rest of the guitar. Not only do you need a guitar to make a pickup useful at all, but the characteristics of the pickup change depending upon existing aspect of the guitar, namely the pot values and the cable length, or at least any parasitic capacitance between the pickup itself and the output jack. A pickup should be thought of as "fabric", not as "shoes".

Not only is the fashion analogy applicable to the electric aspect of pickup, but also literally applicable. Guitars are fashion accessories. There are numerous examples of musicians coordinating their guitar with their clothing. Suppose a musician is wearing a cream outfit, has a cream colored guitar, and wants cream colored pickups to complete the look, then the cream pickups become aesthetically functional at that point.

[rjb]

Inquiring minds want to know: Before DiMarzio, did Gibson or anyone else intentionally make beige or "cream" colored bobbins or covers? My impression is that Gibson made white bobbins that discolored with age to a range of hues, depending on exposure to light, nicotine, etc. If that is the case, it seems to me that new cream colored plastic ain't the same thing as old white plastic- and that at the time DiMarzio introduced cream colored pickups in the '70s, they were a distinctive, valid trademark.

Argument for aesthetic functionality:
"Giving DiMarzio the sole right to use cream on pickup bobbins puts competitors at a significant disadvantage because purchasers of electric guitars prefer to have pickups in colors similar to their jack plates."



Running, ducking, and covering,
-rb

[WolfeMacleod]

Suppose a fabric maker wanted to patent .

Please don't confuse patents with trademarks.
In fact, the fabric color thing has been the subjectof a trademark before...
In 1991, Qualitex, makers of dry-cleaning pads, registered a mark with green and gold colors. Competitor Jacobson began copying. Qualitex sued and won because the color was not essential or made no difference in the product. It gave no utilitarian or aesthetic advantage.

Inquiring minds want to know: Before DiMarzio, did Gibson or anyone else intentionally make beige or "cream" colored bobbins or covers? My impression is that Gibson made white bobbins that discolored with age to a range of hues, depending on exposure to light, nicotine, etc. If that is the case, it seems to me that new cream colored plastic ain't the same thing as old white plastic- and that at the time DiMarzio introduced cream colored pickups in the '70s, they were a distinctive, valid trademark.

Argument for aesthetic functionality:
"Giving DiMarzio the sole right to use cream on pickup bobbins puts competitors at a significant disadvantage because purchasers of electric guitars prefer to have pickups in colors similar to their jack plates."
[ATTACH=CONFIG]39579[/ATTACH]

jack plates...binding...cream pickguards, cream mounting rings...I have four guitars here with cream everything.
I'm not so sure they were white to begin with. Let's start looking up some very old pictures of '59 LP's with covers removed. I recall at article with Seth Lover explaining that when the injector ran out of black dye, cream was used because it was the natural color.
As far as product quality difference go, have anyone ever noticed a difference between cream and black bobbins? Cause there is one, according to the many winders I know. Something to do with the hardness/softness of the material. Not only that, but black shows scuff marks much easier than cream.





Running, ducking, and covering,
-rb

[WolfeMacleod]

Suppose a fabric maker wanted to patent .

Please don't confuse patents with trademarks.
In fact, the fabric color thing has been the subjectof a trademark before...
In 1991, Qualitex, makers of dry-cleaning pads, registered a mark with green and gold colors. Competitor Jacobson began copying. Qualitex sued and won because the color was not essential or made no difference in the product. It gave no utilitarian or aesthetic advantage.

Inquiring minds want to know: Before DiMarzio, did Gibson or anyone else intentionally make beige or "cream" colored bobbins or covers? My impression is that Gibson made white bobbins that discolored with age to a range of hues, depending on exposure to light, nicotine, etc. If that is the case, it seems to me that new cream colored plastic ain't the same thing as old white plastic- and that at the time DiMarzio introduced cream colored pickups in the '70s, they were a distinctive, valid trademark.

Argument for aesthetic functionality:
"Giving DiMarzio the sole right to use cream on pickup bobbins puts competitors at a significant disadvantage because purchasers of electric guitars prefer to have pickups in colors similar to their jack plates."
[ATTACH=CONFIG]39579[/ATTACH]


Running, ducking, and covering,


-rb

Bill Lawrence, Mighty-Mite.

jack plates...binding...cream pickguards, cream mounting rings...I have four guitars here with cream everything. The trademark removed 1/3rd of commonly accepted colors. Or 1/4, if you count Fender "white." You bet that puts us at a significant disadvantage.

I'm not so sure they were white to begin with. Let's start looking up some very old pictures of '59 LP's with covers removed. I recall at article with Seth Lover explaining that when the injector ran out of black dye, cream was used because it was the natural color.
As far as product quality difference go, have anyone ever noticed a difference between cream and black bobbins? Cause there is one, according to the many winders I know. Something to do with the hardness/softness of the material. Not only that, but black shows scuff marks much easier than cream.

[John Kolbeck]

Please don't confuse patents with trademarks.
In fact, the fabric color thing has been the subjectof a trademark before...
In 1991, Qualitex, makers of dry-cleaning pads, registered a mark with green and gold colors. Competitor Jacobson began copying. Qualitex sued and won because the color was not essential or made no difference in the product. It gave no utilitarian or aesthetic advantage.

I understand the difference, I just pulled the wrong word from my brain.

It seems to me that a dry-cleaning pad is a standalone product, and therefore is unlike fabric or guitar pickups, both of which are components of something else, something which happens to serve an aesthetic function.

[mr fab]

yes wolfe

there is a difference between different plastics of various colours, the pigments affect the hardness and stiffness of the material;. I have working in the packaging industry, specifically in packaging machinery, which fill, seal containers and apply lids to containers automatically.

in one frustrating project the customer made the same product but used different colour lids and labels in specific runs, as they were specifically made as "home brands" for various supermarket chains. The bulk of the lids were semi transparent, however i later found out there was also green and yellow. in setting up the machine and doing the commissioning and pilots we used the transparent lids.... all went well and they started production....a week later I had a call.... the machine was not working as the lids were not going on the containers properly. I noticed immediately, that they were using green lids. and comparing them in my hand against the clear lids they were noticeably harder and less flexible. i adjusted the machine for the green lids and they continued on.. however asked to book a time asap, where we could run the pilot production again using all colours they intended to use... and sure enough, the yellow ones were even harder than the green. luckily the adjustments for the yellow (hardest) plastic also worked for the softest. the plastics manufacturer told me that there was no difference material properties between the colours.... but is only interest is to make a nicely injection molded product. A while later a colleague in Europe was having trouble with a lidding machine he was commissioning, and had heard i had some issue which was similar.... it turned out the customer's marketing department decided to change the containers colour to blue from the original colour white.

so in short, yes, different colours will have different properties in terms of hardness and stiffness, depending on the colour/amount of picgments used.

what if we made "photochromatic" coloured bobbins made, which were designed to fade from white... to cream to beige with exposure to UV light. i wonder if this would be a way of getting around the issue and could be patented independently. so you can sell double whites which in a short time become cream.

[John Kolbeck]

Another solution would be to make the tops of the coils modular; the coil would be wound around a thin plastic retainer, and the colored plastic you see would be secured over the top of that. Different colored covers would either be included or sold separately. From there, the customer could fit any combination of colors they wanted.

There are several ways it could be done, it seems that it's a bigger issue to us than it is to pickup manufacturers. Maybe Seymour Duncan didn't renew the double cream license with DiMarzio in the 80's because demand for double cream was not all that high anyway.

[rjb]

JUST PLAYING DEVIL'S ADVOCATE

Bill Lawrence, Mighty-Mite.

What about them? Did they make cream pickups before DiMarzio?
(I really don't know- totally ignorant about this topic.)

jack plates...binding...cream pickguards, cream mounting rings...I have four guitars here with cream everything.

Which were produced before DiMarzio filed the cream trademark?
Or which were produced by DiMarzio to match their pickups?

The trademark removed 1/3rd of commonly accepted colors. Or 1/4, if you count Fender "white." You bet that puts us at a significant disadvantage.

"Accepted" colors? What does that mean?
If you manufacture your own parts, you can make them gold or mint green or tortoise shell or confetti sparkle or....
But I guess that illustrates the difference between a pickup "builder" and a pickup "winder".

I'm not so sure they were white to begin with. Let's start looking up some very old pictures of '59 LP's with covers removed. I recall at article with Seth Lover explaining that when the injector ran out of black dye, cream was used because it was the natural color.

So, has DM ever gone after someone for using unpigmented plastic?

As far as product quality difference go, have anyone ever noticed a difference between cream and black bobbins? Cause there is one, according to the many winders I know. Something to do with the hardness/softness of the material. Not only that, but black shows scuff marks much easier than cream.

Those sound like real functionality differences (or whatever the legal term is).

[rjb]

Another solution would be to make the tops of the coils modular; the coil would be wound around a thin plastic retainer, and the colored plastic you see would be secured over the top of that.

That product already exists. IIRC, they're called bobbin toppers.