In a rare “color mark” decision, the Board reversed a refusal to register a mark comprising the color “white” for “preformed gunpowder charges for muzzleloading firearms,” finding that Applicant Hodgdon Powder had proven acquired distinctiveness under Section 2(f). In re Hodgdon Powder Company, Inc., Serial No. 85947962 (June 30, 2016) [precedential].
“The mark consists of the color white applied to gunpowder. The broken lines depicting the configuration of the goods indicate placement of the mark on the goods and are not part of the mark.”
The Examining Attorney maintained that the applied-for mark is not inherently distinctive and that Hodgdon’s evidence of acquired distinctiveness was insufficient. [Of course, under Wal-Mart and Qualitex, single color marks are never inherently distinctive].
The Board noted that gunpowder is also referred to as black powder. Applicant Hodgdon’s witness testified that “gunpowder has always been gray or black.” Hodgdon stated, in response to questions posed by the Examining Attorney, that the color white for its gunpowder serves no purpose other than to identify Hodgdon’s products, that the color white is not a natural by-product of the manufacturing process, and that no one else in the industry uses the color white for gunpowder.
The Board concluded that the color white “is an anomaly contrary to consumers’ expectations regarding the appearance of the product.”
Hodgdon filed a declaration attesting to substantially exclusive and continuous use of the color white for at least the five years preceding the filing date of its application. It also provided the results of an informal survey from the 2014 Shot Show in Las Vegas, in which just over 90% of respondents said that only one company makes white gunpowder, and that company is Applicant Hodgdon.
Applicant’s advertising stated that its product, sold under the mark WHITE HOTS, is “The Only White Gunpowder.” It sales since first introducing the mark in 2008 have been $3.5 Million.
The Examining Attorney contended that Hodgdon’s advertising was insufficient as “look for” advertising, and that the survey was inadmissible because insufficient information was provided regarding the methodology and the participants.
The Board, however, found Hodgdon’s advertising to be “effective ‘look for’ advertising.” As to the survey, the Board acknowledged that it would not be admissible in an inter partes proceeding and standing alone would not establish acquired distinctiveness. However, the validity of the survey was immaterial in light of the Board’s finding regarding the “look for” advertising.
Reviewing the totality of the evidence, the Board concluded that the color white for Hodgdon’s products has acquired distinctiveness, and so the Board reversed the refusal to register.