Thursday, September 13, 2007

Precedential No. 57: TTAB Finds the Color Purple to be Functional for Sandpaper

Applicant 3M failed in its attempt to register a deep shade of purple for "sandpaper, namely, coated abrasives with either paper or cloth backing," the Board finding the alleged mark to be functional, and if not functional, lacking in acquired distinctiveness. Saint-Gobain Corp. v. 3M Company, 90 USPQ2d 1425 (TTAB 2007) [precedential].


Acquired Distinctiveness: The Board chose to consider the acquired distinctiveness issue first because it "presents a better vehicle for setting out the evidence in the case." Since color cannot be an inherently distinctive trademark, 3m sought registration via Section 2(f). 3M bore the burden of proof to establish acquired distinctiveness, a "difficult" burden for a color mark.

3M offered the testimony of four witness and an expert, and provided sales and advertising figures. A basic problem, however, was the inconsistency of the color used on 3M's goods, since it sought to register a specific shade of purple.

Moreover, Opposer Saint-Gobain submitted "significant evidence and arguments" to counter 3M's claim, including proof of third-party use of purple and of color coding systems for abrasive coatings. It also submitted the results of a telephone survey, which the Board found to provide "some support" for Saint-Gobain's position.

In sum, the Board found that 3M's evidence fell short: "despite the volume of evidence, there is little direct evidence of customer recognition, and applicant's circumstantial evidence is simply not very persuasive."

Functionality: Opposer Saint-Gobain claimed functionality because "purple is a by-product of the manufacturing process, and purple is used in color-coding." 3M contended that Saint-Gobain's first argument failed because "there are simply too many variables at play in the manufacturing process." The Board, however, found that "with respect to competitive need ... opposer has set out a prima facie case that coated abrasive manufacturers have to be able to use various shades of purple, including applicant's."

As to color coding, the Board was not convinced that third parties would necessarily have to use purple, but it did find that "[i]n the field of coated abrasives, color serves a myriad of functions, including color coding, and the need to color code lends support for the basic finding that color, including purple, is functional in the field of coated abrasives having paper or cloth backing."

"when color is so subject to variables that applicant itself sells its own 'distinct' shade of purple in a different shade of purple, it would place competitors at a disadvantage if they were forced to vary their production techniques and research to avoid subjecting themselves to claims of infringement by a company that cannot consistently market its product with the same distinctive shade of purple."

The Board further observed that "[a] deep purple color would be one of a small number of dark colors that would help manufacturers dye their products to avoid streaking or other imperfections."

The Board concluded that 3M had not sustained its burden of showing "that there is no competitive need for others to use the color purple and that its deep purple color is not functional."

The Board therefore sustained the opposition.


TTABlog note: This story may be apocryphal, but supposedly the musician sometimes known as Prince, who hails from the St. Paul/Minneapolis area, has a favorite uncle who worked at 3M. Indeed, the uncle worked on this very sandpaper project. This uncle was so beloved by the rock star that Prince wrote a song in his honor: the legendary "Purple Grain."

Text Copyright John L. Welch 2007.

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