Precedential No. 19: Red-White-and-Blue Mark Not Confusable with Red-Top Mark for Fence Posts, Says TTAB

Inter partes proceedings involving two color marks are as rare as a traffic cop in Boston. The Board denied this petition for cancellation of a supplemental registration for the color mark (red-white-and-blue) shown below left, for "metal fence posts," finding confusion unlikely with the registered color mark (red top) shown below right for "metallic fence posts." In a 69-page decision, the Board found the first DuPont factor - the dissimilarity of the marks - to be dispositive. Keystone Consolidated Industries, Inc. v. The Franklin Investment Corp. DBA Franklin Industries, 2024 USPQ2d 2025 (TTAB 2024) [precedential] (Opinion by Judge Cheryl S. Goodman).

Priority: In a cancellation proceeding in which the petitioner owns a Principal Register registration and challenges a Supplemental Registration, the Section 7(b) presumptions apply only to petitioner. Petitioner was therefore entitled to rely on its registration for purposes of priority without having to establish a prior use date either by relying on its application filing date or on an earlier use date. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1402 (CCPA 1974).

Goods/Channels/Consumers: Because the goods are identical, the Board presumed that the channels of trade and classes of consumers are the same. As to purchaser care, the Board found that buying metal fence posts, generally used for agricultural properties, would not be an impulse purchase. "However, because there is no specific testimony in the record about purchasing conditions, pricing, and all types of purchasers who would purchase such metallic or metal fence post products. we find the sophistication of purchasers neutral in the DuPont analysis."

Strength: Color marks applied to products or portions of products "are not generally distinctive, (and can never be inherently distinctive either under common law, under pre-Lanham Trademark Acts, or under the Lanham Act)." The Board therefore found petitioner’s red mark to be inherently and conceptually weak. 

As to commercial strength, the evidence of long use (since 1915) but with no sales figures, and of advertising figures combined with those for other products, was insufficient to support a finding of commercial strength:

Although we have over a hundred years of use of the Red Top Fence Post Mark, and wire fencing with a red topped color feature, we lack sufficient evidence of the extent of consumer exposure to or recognition of the Red Top Fence Post Mark or the red topped fencing product line. Long use is not sufficient by itself to prove fame or commercial strength.

However, there was no evidence of third-party registration or third-party use of the color red, as a single-color mark, for fence post tops, that would demonstrate weakness in the marketplace.

Given the Red Top Fence Post Mark’s conceptual weakness and lack of sufficient record evidence that the Red Top Fence Post Mark is commercially strong, we conclude that Petitioner’s mark is entitled to a narrow scope of protection. We find the fifth and sixth DuPont factors are neutral.

Marks: Respondent's mark consists of "a metal fence post with a blue bottom, white middle, and red top." Petitioner's mark "consists in coloring a short portion of the upper end of the post red." Because the marks are color marks, the similarity of the marks must be decided "primarily on the basis of visual similarity, which has been described as a 'subjective eyeball test.'" The Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is needed to support a conclusion of likely confusion.

Petitioner argued that the dominant feature of both marks is the red, top portion because consumers supposedly recognize the top color of fence posts as a source identifier. The Board was unconvinced: "we consider Respondent’s multi-color mark in its entirety in our comparison of the marks, and do not discount any colored portion."

The Board found that "[t]he commercial impression of Petitioner’s Red Top Fence Post Mark, is a 'red top,' and the color red." On the other hand, consumers would perceive respondent’s Red, White and Blue Fence Post Mark as referring to "the national colors of the United States of America, or the flag of the United States of America."

Critically, as to appearance, the Board found the marks dissimilar. Even if the color red in petitioner's mark were considered to be the same color red as depicted in respondent's registration, "consumers encountering the parties' marks are not likely to perceive Petitioner’s Red Top Fence Post Mark and Respondent’s Red, White and Blue Fence Post Mark as the same or similar." And so, the Board found the two color marks to be "distinct and dissimilar."

Reviewing the relevant DuPont factors, the Board concluded that the relatedness of the goods, channels of trade, and class of consumers weighed in favor of likelihood of confusion. The conditions of sale and the fifth, sixth, seventh, eighth, tenth, and thirteenth DuPont factors were neutral. But the dissimilarity of the marks weighed "heavily" against likelihood of confusion.

Concluding that "the dissimilarity of the marks is the most important and pivotal factor, outweighing the other DuPont factors," the Board denied the petition for cancellation.

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Text Copyright John L. Welch 2024.