Wednesday, August 05, 2009

Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusal to Register the Color Maroon for Steel Anchors

If you want to register a color mark, you'd better show up at the TTAB with some pretty darn good proof of acquired distinctiveness. Applicant General Technologies gave it a shot, claiming trademark rights in the color maroon for "maroon plastic encapsulated steel anchors for multi-strand post-tension systems" and for "maroon plastic encapsulated steel anchors for monostrand post-tension systems." But its Section 2(f) proofs failed to satisfy the "substantial" burden of proving acquired distinctiveness for a color mark. In re General Technologies, Inc., Serial Nos. 77052472 and 77052485 (July 23, 2009) [not precedential].

Of course, the Supreme Court has told us that a single color cannot be an inherently distinctive mark. Applicant based its 2(f) claim on use of its alleged mark for 10 years, on the assertion that several third-parties use other colors for similar devices, and on the facts that Applicant displays the color maroon at its website and owns two Supplemental Registrations for these very same marks.

The Board observed that "the burden of proving that a color mark has acquired distinctiveness is substantial." Given the nature of the products, it concluded that ten years of use of the color, by itself, is not enough. Applicant failed to provide sales or advertising figures, and nothing in the record showed the color maroon being promoted as a source indicator. Nor did Applicant submit any articles or publicity identifying or recognizing its maroon anchors. And the Board pointed out that Applicant cannot base its claim of acquired distinctiveness on its Supplemental Registrations. [No kidding! - ed.].

Finding itself about to be marooned on the island of nonregistrability, General Technologies tried one more argument: that the maroon mark "would distinguish Applicant's goods from those of others, and indicate the source of the goods, in the hypothetical scenario where a building, bridge, or other structure collapses. *** Indeed, engineers investigating such events would undoubtedly be familiar with the maroon color mark of Applicant."

The Board pointed out that "this unsupported argument is more directed to applicant's intent regarding its use of the maroon color rather than to consumer perception." [In other words, where's the proof? - ed.]

Finally, the Board distinguished this case from the Owens-Corning pink insulation case, where the evidence included marketing expenditures of more than $42 million in connection with Pink Panther advertisements featuring the slogan "[a]dd another layer of pink," and another $11 million for displays, brochures, and other promotional items that highlighted the "pink" color as applied to the goods.

And so the Board affirmed these two refusals to register.

TTABlog comment: I'm not a big fan of the color maroon. The sports teams at my high school (Champaign, Illinois) were called the "Maroons," and they were cheered on by a furry, shapeless mascot called "Max the Maroon." It was rather embarrassing, but then isn't that what high school is all about?

Text Copyright John L. Welch 2009.


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