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.