Tuesday, April 26, 2011

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 In re Nike, Inc., Serial No. 77615883 (March 30, 2011) [not precedential].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.


At 8:43 AM, Blogger Frank said...

I agree with you. However, this is just the latest demonstration of the rule that big trademark owners always get the benefit of the doubt just like Roger Clemens used to get those wide strike zones.

At 12:03 PM, Anonymous Anonymous said...

Funny, i thought the "red" had to do with its stock price, cause its been bleeding red since its last earnings call.

At 1:37 PM, Anonymous Anonymous said...

I think they got it right for the wrong reason.

Why did Nike bring up the Tiger relationship. Isn't the issue one of a "combined mark"? I think Nike goofed a bit by admitting there is a "color significance" to the red color and the goods, but in the end they got what they wanted.

The purpose of a disclaimer is:

As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark. Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954).

BUT, this is what TMEP §1213.05 says which I think is SPOT on for this case (and discussed nowhere in the decision):

A descriptive word can be combined with nondescriptive wording in such a way that the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit. This happens when the combination itself has a new meaning. An example is the term “Black Magic,” which has a distinct meaning of its own as a whole. The word “black” is not intended to have color significance in relation to the goods, and should not be disclaimed even if the mark is applied to goods that are black in color.

But these days with the TTAB who knows. Does the Board even understand the "rule" on disclaimers. They are all over the map.

Too bad VICTORY RED is not working for Tiger right now.

At 4:05 PM, Blogger John L. Welch said...

I think BLACK MAGIC is a well known, unitary term. VICTORY RED is not. I think that if the term in question has a unitary meaning, that meaning should be evident from the mark itself, without resort to the Applicant's use of the mark. See, e.g., the case involving THE GREATEST BAR, where the Board refused to consider external evidence that purportedly showed that THE GREATEST BAR is a double entendre.

At 2:25 PM, Anonymous Anonymous said...

The rule is not whether the term is "well known.

The test appears to be whether the descriptive significance of the word in relation to the goods is lost and the combination functions as a unit.

I think VICTORY RED does that in same way as BLACK MAGIC.

At 1:01 PM, Anonymous Martin said...

I have to agree with John and his comments regarding BLACK MAGIC. "Black magic" as a whole has a meaning separate and apart from the individual words, i.e., witchcraft. This is readily apparent from the mark itself or by looking up the dictionary definition of "black magic." What the previous two "Anonymous" posters haven't stated is what the unitary impression of the mark "VICTORY RED" is apart from its elements. Merely combining a descriptive word with a non-descriptive word does not in and of itself make the mark unitary (e.g., FORD CAR for cars would require a disclaimer of "CAR"). Simply saying it is unitary or creates a different commercial impression is not enough -- what is that impression? Is there any evidence consumers would get that impression from viewing the mark applied to the goods? None of that was shown in this case; therefore, "VICTORY RED" is not unitary, contains separable elements, and "RED" should have been disclaimed.


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