No Need to Disclaim "RED" in VICTORY RED for Golf Equipment, Says TTAB
The Board reversed a refusal to register the mark VICTORY RED for "golf club heads; golf club shafts; golf bags; [and] golf ball markers" absent a disclaimer of the word RED. It ruled that although "red" may "name the color of ornamentation or accent on applicant's goods, the term does not describe any attribute of the equipment itself." In re Nike, Inc., Serial No. 77615883 (March 30, 2011) [not precedential].
Nike claimed that RED is not merely descriptive of the goods because it is "inextricably associated with the professional golfer Tiger Woods. His persona is the red Nike Shirt." According to Nike:
the red accents on Applicant’s products are used to evoke – just as the use of “RED” within VICTORY RED is used to evoke – the connection of three things: (1) the world class golfer Tiger Woods, (2) his red Nike shirt, and (3) winning the game of golf. The mark VICTORY RED makes consumers imagine Tiger Woods wearing the red Nike shirt, and VICTORY RED suggests to consumers that, with VICTORY RED golf equipment, they too can visualize themselves as powerful, victorious golfers.
Nike pointed out that the amount of red on its products is minimal, and in any event are merely an ornamental touch. [Where in the application does it say that the goods [e.g., golf bags] may not be entirely red? Is there any limitation requiring Nike to use the mark only in association with Tiger Woods? - ed.]
The Examining Attorney introduced website excerpts showing third parties using the color red as "accents" on golf clubs. Some third-party registrations of record included a disclaimer of "red," some did not.
The Board noted that the record is "replete with articles ... about the accomplishments of Tiger Woods." According to the Board, "[t]he fact that Tiger Woods wears a red shirt on the final day of a golf tournament is commonly known." [That's news to me - ed.]
The Board concluded that consumers will not perceive RED as describing the golf equipment, even though there may be red ornamentation. It found that Nike's "use of the color red is not prominent or conspicuous, nor is it even a distinguishing feature." [Again, is there any such limitation as to prominence of the color red in the application? ed.].
According to the Board, "[t]he examining attorney has failed to give appropriate consideration to the full context in which the term 'RED' is used as part of applicant's mark VICTORY RED for golf equipment." "The term 'RED," as used in applicant's mark and in the context of the goods, has a greater meaning in context than the fact that the goods display a red accent." [Why should external evidence be relevant at all, when there are no limitations on use in the application? ed.].
The Board found that third-party registrations submitted by Nike suggest that the PTO has on numerous occasions not required disclaimers of color names in trademark, even when the goods display the named color. [What about the PTO's third-party registrations showing the opposite? - ed.].
And so the Board reversed the refusal.
TTABlog comment: I think the Board got this one wrong. It seems to me that it should have considered the possibility that the goods could be sold entirely in the color red, and with no association with Tiger Woods.
So what if Nike would have to disclaim "red" apart from the mark as shown? Big deal. Does Nike really think it has some rights in the word "red" for golf equipment? Maybe someone will oppose.
Text Copyright John L. Welch 2011.