Thursday, October 27, 2022

TTAB Affirms Refusal to Register the Color Orange for Tool Accessory Trays Due to Lack of Acquired Distinctiveness

The Board upheld the USPTO's refusal to register the color orange as a trademark for "tool and tool accessory trays not made of metal sold empty and parts and fittings therefor," on the ground that the proposed mark "is not inherently distinctive, has not acquired distinctiveness, and thus fails to function as a trademark." In re Grypmat, Inc., Serial No. 90181331 (October 25, 2022) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant Grypmat did not claim inherent distinctiveness, probably because it recognized that a single color cannot be an inherently distinctive trademark. (Wal-Mart, Qualitex). Grypmat claimed acquired distinctiveness. The Board observed that "[t]o show that a mark has acquired distinctiveness, an applicant must demonstrate that the relevant public understands the primary significance of the mark as identifying the source of a product or service rather than the product or service itself." (quoting Steelbuilding.com).

The Board considered the six factors set forth in the CAFC's Converse decision in its analysis of the Section 2(f) issue:

  1. Association with a particular source by actual purchasers (usually demonstrated by customer surveys); 
  2. Length, degree, and exclusivity of use; 
  3. Amount and manner of advertising; 
  4. Amount of sales and number of customers; 
  5. Intentional copying; and 
  6. Unsolicited media coverage of the product embodying the mark.

Grypmat claimed that the consumers of the goods are "mechanics, which amounts to a small sector of the consuming public." The Board, however, noted that there is no such limitation as to customers in the application at issue. The evidence submitted by Examining Attorney William Verhosek showed that non-metal tool trays are advertised and sold to homeowners and DIYers.

Grypmat claimed there were no other "comparative products" when it began selling its orange trays in 2016, but it conceded in light of the evidence that there are tool trays available in many colors. Moreover, the Board noted that an orange tray is sold at Home Depot under the brand name GEARWRENCH. The Board found that "Applicant's use of the color orange as applied to tool trays is not substantially exclusive." [Isn't that the end of the story? - ed.].

Grypmat claimed that at least three companies that were selling orange trays were intentional copiers "who found it to their pecuniary advantage to use the proprietary color orange for their look-alike trays, that serve the exact function" of the Grypmat trays. However, there was no evidence of intentional copying, nor was there any evidence of any attempt by Grypmat to enforce its alleged rights.

Because of the evidence showing the common use of different colors for tool trays, Grypmat faced a "more difficult task in demonstrating distinctiveness of its claimed color."

Grypmat complained that the Examining Attorney failed to consider its evidence of sales revenues and advertising revenues, but the Board agree with the Examining Attorney when he pointed out that none of the advertising or media attention acknowledged the color orange as an indicator of source. The lack of "look-for" advertising is not fatal to a claim of acquired distinctiveness, but it is a factor to be considered. Grypmat's sales figures and advertising data were "impressive," but that does not always equate to acquired distinctiveness. Moreover, there was no evidence putting those numbers into context within the relevant marketplace.

Based on the entire record, the Board concluded that Grypmat's evidence fell short of carrying its high burden to show acquired distinctiveness of the color orange for its tool trays. And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? If not, it's awfully close.

Text Copyright John L. Welch 2022.

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