The Board affirmed a refusal to register the color “copper” for “flexible, plastic tubes used in subsurface drip irrigation systems,” finding the proposed mark to be aesthetically functional under Section 2(e)(5). Moreover, assuming that the color “copper” is not functional for the goods, the Board found that the proposed mark lacked acquired distinctiveness under Section 2(f). In re Rain Bird Corporation, Serial No. 85044106 (January 3, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).

Functionality: The Board observed that a color may be a source indicator (e.g., the green-gold dry cleaning press pads in Qualitex and the pink fiberglass insulation of Owens-Corning), or it can be functional (e.g., the black outboard motors in Brunswick and the black boxes for floral arrangements in Florists’ Transworld (FTD)). [Or it can be neither – ed.].

A product feature such as color can be found functional if it serves a purpose that is so significantly useful or important to the class of consumers that competitors need it to compete effectively, and exclusive use of the feature by one producer would place competitors at a substantial non-reputation-related disadvantage. Brunswick, 32 USPQ2d at 1122-23; see also Qualitex, 34 USPQ2d at 1163-65; FTD, 106 USPQ2d at 1791; M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1096 (TTAB 2001); TMEP § 1202(a)(vi).

Applicant Rain Bird did not dispute that the color “brown” is functional for drip irrigation tubing used above ground, but it argued that for its subsurface irrigation systems, “the Copper Color mark literally disappears beneath the ground, extinguishing any purported aesthetically functional aspect of the shiny metallic COPPER Mark.”

The record showed, however, that Rain Bird’s copper-colored subsurface tubing is in fact marketed for use above ground.The evidence also showed that drip tubing sold by competitors may also be used above ground.

[E]ven though Applicant has purposely drafted a description omitting above ground use, for which use it admits the color brown is functional, we note that subsurface tubing is a good which is used above ground. We have interpreted the nature of Applicant’s subsurface goods in light of what the record shows the subsurface goods to include, which is tubing that may be used above ground.

Despite Rain Bird’s “tactical decision to carve above-ground use out of the identification of goods,” the Board found that “flexible, plastic tubes used in subsurface drip irrigation systems” includes drip
tubing that may be used above ground, since such use is “an ordinary aspect of the goods.” Rain Bird’s drip tubes will be viewed by consumers as being usable above ground when they are offered in the same marketplace with above ground irrigation tubes.

Rain Bird claimed that its “copper” mark “stands out from the aesthetically functional brown” colors used on other tubing that otherwise “seamlessly blends into the surface landscape.” Definitions of “copper” generally supported the conclusion that copper is a shade of brown. Rain Bird’s competitors use various shades of brown, including some that resemble copper, for their drip tubing to blend with the landscape.

Providing a variety of browns, include shades of what may be called “copper,” serves the function of allowing irrigation tubing to blend into a variety of landscapes  and mulch. Issuing the applied-for registration to Applicant would unfairly hinder competitors’ use of a color that is commonly used for drip tubing. Considering the record as a whole, we find that registration of Applicant’s proposed mark would put its competitors at a significant non-reputation based disadvantage, as in Brunswick and FTD.

Acquired Distinctiveness: For the sake of completeness, the Board also  we considered Rain Bird’s claim that the proposed mark may be registered on the basis of acquired distinctiveness.. Of course, a single color applied to a product can never be inherently distinctive, but it may be registered on the Supplemental Register or on the Principal Register under Section 2(f). “By their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.”

As shown in the multiple images of drip tubing . . . , most of the drip tubing of record is some shade of brown. It would be difficult to name each shade of brown as it appears in the record, but some appear to be copper colored. In view thereof, Applicant’s use of copper, which is a shade of brown, is unlikely to be seen as an indication of source.

The Board found that Rain Bird had failed to demonstrate the “substantially exclusive” use required by the statute. And even though Rain Baird had proven some “look for” packaging and advertising, it submitted no data regarding same to place the advertising in context.

On balance, weighing together the[Converse] factors for which there is evidence, we determine that Applicant has not met its difficult burden of demonstrating the existence of secondary meaning. Applicant’s evidence, taken altogether, fails to demonstrate that the relevant purchasing public has grown to recognize the primary significance of its proposed copper-colored mark as identifying the source of its products. For these reasons, we find that Applicant has not carried its “unusually high burden” of proving that its proposed mark has acquired distinctiveness. In re Owens-Corning Fiberglas, 227 USPQ at 424; FTD, 106 USPQ2d at 1794.

And so the Board affirmed the refusal.

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TTABlog comment: My drip tubes look like the third one in the picture above. How about yours?

Text Copyright John L. Welch 2019.