TTAB Reverses Failure-to-Function Refusal of MONTICELLO for House Paint

The PTO refused registration of MONTICELLO for house paint on the ground that the term "as used on the specimens of record, serves solely as a color designation and does not serve a trademark function." The Board reversed, observing that even if a term identifies one particular shade or color, it may still function as a trademark if used in a trademark manner by the Applicant. In re Thomas Jefferson Foundation, Inc., Serial No. 77967242 (June 29, 2010) [not precedential].

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The determination of whether a term functions as a mark is made based upon the specimens of use. [Doh! - ed.]. The Board holds that "use of a proposed mark to identify one particular style or color shade for the goods, e.g., lipstick, paints, etc., does not necessarily render the term unable to function as a trademark." The Board found this case similar to In re Clairol Inc., 173 USPQ 355 (CCPA 1972):

In the Clairol decision, the predecessor of our primary reviewing court reversed the Board and found SWEDISH CRYSTAL for hair color products registrable because it was a "coined and completely arbitrary term” and was used as a trademark despite also being a color designation and always followed by wording, "light muted ash."

Here, like “Swedish Crystal,” the term “Monticello” has no meaning or suggestive connotation with respect to a color: unlike, say, "lemon" or "banana." More importantly, applicant’s manner of use (on the specimen above) of MONTICELLO would cause viewers to perceive the term as more than just a color designation. [Applicant's original specimen of use was a paint chip or swatch card with "Monticello Yellow" on one side, and the color swatch on the other. That didn't cut the mustard - ed. ].

Applicant's substitute specimen of use, a point-of-purchase placard, displayed proper trademark use.

The point-of-purchase placard ... shows the wording “Monticello ™ Yellow” on a can of paint. On the adjoining page, the wording “Ralph Lauren Introduces Monticello ™ Yellow” appears prominently at the top. The term “Monticello” is also used on both pages in reference to the historic home of Thomas Jefferson, and discusses how the home inspired the paint. We find that consumers who receive this point-of-sale placard will perceive applicant’s use, through its licensee, of the term “Monticello” as a term used uniquely by applicant to identify and distinguish applicant as the source of that particular paint. The term “Monticello” is also used on both pages in reference to the historic home of Thomas Jefferson, and discusses how the home inspired the paint.We find that consumers who receive this point-of-sale placard will perceive applicant’s use, through its licensee, of the term “Monticello” as a term used uniquely by applicant to identify and distinguish applicant as the source of that particular paint.

And so, even though MONTICELLO designates a single shade of yellow paint, as opposed to a line of various paints in different colors, the Board ruled that the term MONTICELLO also functions as a trademark for Applicant's house paint.

TTABlog comment: Be careful not to confuse MONTICELLO YELLOW with MELLOW YELLOW, the latter being a song by Donovan.


Text Copyright John L. Welch 2012.