Friday, January 25, 2008

Finding Acquired Distinctiveness and Substantial Exclusivity Lacking, TTAB Cancels Registration for the Color Gold for Fluorescent Lamps

In a rare "color" case, the Board granted the consolidated petitions of three companies for cancellation of the registration for a mark comprising the single color gold applied to the end caps of fluorescent lamps. It ruled that the subject mark had not acquired distinctiveness under Section 2(f) and that Respondent's use of the mark had not been substantially exclusive. H & H Indus. Inc. v. LTG, Ltd., Cancellations Nos. 92042050, 92042382, and 92042496 (January 11, 2008) [not precedential].

The Petitioners contended that Respondent "has not enjoyed substantially exclusive use of the color gold due both to petitioners' use of the identical designation on the end caps of various types of fluorescent lamps as well as third-party use of the identical or similar designations therefor." They further contended that Respondent failed to show customer recognition of the color gold as a source identifier for its lamps.

Respondent bore the burden of persuasion on the issue of acquired distinctiveness, a "difficult" burden for a color mark. Evidence developed after registration, as well as pre-registration evidence, must be considered.

Turning first to the sufficiency of Respondent's 2(f) evidence, the Board noted that sales figures indicated a "substantial degree of success," but evidence was lacking as to Respondent's market share or sales ranking. Moreover, sales figures show only the popularity of the product, not that consumers view the gold end caps as a trademark.

Respondent's marketing materials were directed to its sales representatives, not customers, and it was "not clear therefrom that such end caps are displayed as a trademark so much as a feature of respondent's lamps." Furthermore, the materials display numerous products under a variety of marks, and so it is unclear how much of the advertising expenditures relate to the products with gold end caps.

Respondent submitted 28 form affidavits during prosecution, which affidavits the Board found unpersuasive: they were cursory in nature and lacked basic information regarding the bases for the statements made; they were made by "regular customers for various lengths of time," rather than the average purchaser of fluorescent tubes; and the affiants did not state that they recognized the gold end caps as a trademark.

Given the heavy burden to prove acquired distinctiveness for a color mark, Respondent's proofs were insufficient to convince the Board that the public recognizes the color gold as a trademark for Respondent's products.

Turning to the issue of exclusivity of use, the cumulative effect of the use of the color gold by the Petitioner, as well as numerous third-party uses, led the Board to rule that Respondent's use "fails to qualify as 'substantially exclusive' as required under Section 2(f)." The Board rejected the contention that only uses commenced prior to Respondent's adoption of the gold color are probative on this issue. Moreover, even though there was little evidence as to the "precise extent" of the third-party use, "such users are too numerous to ignore."

In sum, the Board concluded that Respondent's use of its alleged color mark "has not been substantially exclusive," and that the evidence of acquired distinctiveness was insufficient to support a registration under Section 2(f).

TTABlog query: When is the last time the Board upheld the validity of a single color registration? I think it may have been in Newborn Bros. v. Dripless, Inc., Opposition No. 91113471 (August 16, 2002) [not precedential], involving the color yellow for a caulking gun. On the 2(f) issue, the Board there found "particularly significant" Applicant’s “extensive ‘image’ advertising and promotion stressing the color 'yellow' in a trademark sense.”

Text Copyright John L. Welch 2008.


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