Precedential No. 16: TTAB Finds That Orange-and-Green Color Combination Fails to Function as a Trademark For Newport Cigarettes

Affirming two refusals to register, the Board found that the orange-and-green color combination for the packaging of Newport-brand cigarettes fails to function as a trademark, and further that the proposed mark is a mutilation of the mark as it appears on the specimen of use. Thousands of customer and dealer statements submitted by Applicant Lorillard in an attempt to prove acquired distinctiveness failed to satisfy its high burden of proof. In re Lorillard Licensing Company, LLC, 99 USPQ2d 1312 (TTAB 2011) [precedential].


The applied-for mark consists of the color combination of orange and green, shown in the drawing immediately above, with the textual matter in orange and the background in green. However, Lorillard made no claim to any particular textual matter or any particular location for the text. The specimen of use, shown far below, is a sleeve that holds two packs of cigarettes.

The refusals to register were based on the PTO's contention that consumers do not view the color combination of orange textual material on a green background regardless of the text, as a source indicator for cigarettes. [The PTO did not refuse registration on the ground that the applied-for mark is a "phantom" mark.]

Applicant Lorillard claimed registrability under Section 2(f). The Board pointed out once again that "the kind and amount of evidence necessary to establish acquired distinctiveness ... depends on the nature of the mark and the circumstances surrounding the use of the mark in each case." Here, Lorillard had a "heavy burden."

Lorillard submitted two declarations from the brand director of its exclusive licensee, in which he detailed the sales and advertising numbers for cigarettes sold in connection with this color combination, and the use of the combination in advertising. The Board, however, had some problems with this evidence. For example, neither the cigarettes nor their individual boxes used the color combination, and the advertising and sales displays did not show "consistent use" of orange text on a green background in such a way as to function as a trademark.

Lorillard proffered more than 6,500 form statements from customers and more than 4,100 forms from dealers, purportedly showing that the applied-for mark is recognized as a source indicator.

CUSTOMER STATEMENT OF SECONDARY MEANING

To Whom It May Concern:

I am a customer of Newport cigarettes and have purchased at least one pack of Newport cigarettes. Also, as a frequent visitor of convenience stores, I have noticed the distinctive orange and green coloring of Newport’s point of purchase displays and advertising. I have come to look upon the orange and green coloring as a symbol identifying Newport cigarettes only and not of any other company in this field.

The Board did not find the customer statements "to be very probative." There was no information about the people who signed the forms: how often they bought cigarettes, the conditions under which they signed the statements, or their understanding of what they were signing. And it is not clear whether the customers were all in the same city or represent any geographic diversity.

The dealer statements were longer, but there was no indication of the name or nature of the retail establishment, or whether cigarette sales are a significant part of the business. Moreover the "rather vague and general nature of the statement" was troublesome: they do not indicate the proposed mark for which registration is here sought, so that it was not clear whether the consumers recognized the colors alone regardless of the text that appeared.

The Board observed that the sheer number of statements submitted was not important. It is what they say that counts. The Board would find "much more probative" fewer declarations with more pertinent information: "where the customers are from, that they are current purchasers of cigarettes, and a clear indication that they are aware of what the proposed mark is and that they view it as a trademark."

Finally, the Board reviewed Applicant's evidence that its purported mark has been copied by others in various parodies or advertising references. The Board agreed that this evidence showed "some consumer recognition that applicant uses the color orange and green for its cigarettes," but it was not enough to prove that consumers "will recognize any orange-colored text appearing on a green background as a trademark of applicant's."

The Board concluded that Lorillard failed to demonstrate that the applied-for mark, "namely, any orange text appearing on a green background," has achieved acquired distinctiveness. It ruled that the applied-for combination does not function as a trademark. Moreover, because the combination does not create a "separate commercial impression from the wording shown in the specimens," the drawing is also unacceptable as a mutilation of the mark [because the drawing leaves off some of the wording on the specimen].

specimen of use
TTABlog comment: I am re-considering whether to apply to register the color orange on a blue background as a service mark for informational services.

Seriously, though, were the declarations really that bad? It is not easy to get statements from consumers, so Lorillard's submission of more than 6,500 was pretty impressive. I get the feeling that the Board did not care for the "phantom" nature of the proposed mark, and would like to have knocked it out on that ground alone.

Text Copyright John L. Welch 2011.