In what appears to be the first TTAB decision finding a color to be generic, the Board granted a petition for partial cancellation of a registration for the mark shown first below (lined for the color red) for, inter alia, saw blades, and it also granted a petition for cancellation of a registration for the mark shown second below (“the color red as applied to substantially the entire surface of the goods”), for “blades for reciprocating power saws.” Milwaukee Electric Tool Corp. v. Freud America, Inc., Cancellations Nos. 92059634 and 92059637 (December 2, 2019) [precedential] (Opinion by Judge Thomas Shaw).

Genericness: The question faced by the Board was “whether the color red is generic for the identified goods and thus unregistrable under Trademark Act Sections 1, 2 and 45 because it cannot function as a mark.”

Section 14 of the Trademark Act states that “[t]he primary significance of the registered mark to the relevant public . . . shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.” 15 U.S.C. § 1064(3). The Court of Appeals for the Federal Circuit has held that “generic name” encompasses anything that “potentially can but fails to serve to indicate source, including trade dress.” Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1535 (Fed. Cir. 1999).

Thus, as a form of trade dress, a single color applied to goods may be generic for those goods if it “fails to serve as an indicator of source.” See Sunrise Jewelry Mfg. Corp. v. Fred S.A.

In a cancellation proceeding, the Board looks at  “both the time when the registrant registered its marks as well as at the present day to determine whether the mark (sic) must be cancelled.” [Actually, registrations are cancelled, not marks – ed.]

The Board recently held that product packaging trade dress, like product design trade dress, may be deemed generic where it is “at a minimum, so common in the industry that it cannot be said to identify a particular source.” In re Odd Sox LLC, 2019 USPQ2d 370879 (TTAB 2019) (packaging for socks), quoting Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1555 (TTAB 2009) (generic guitar shape unregistrable).

The Board deemed it appropriate to apply a two-step inquiry (as with word marks and other kinds of trade dress), in which it first considers the genus of goods or services at issue, and second considers whether the color is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services.

As usual, the Board found the genus of goods to be adequately defined by the identifications of goods in the challenged registrations. For convenience it referred to the genus generally as “saw blades” or “reciprocating saw blades,” and it interpreted the term “saw blades” to include any type of saw blade used with any power woodworking machines.

Petitioner Milwaukee established that it used the color red on saw blades for decades before Respondent Freud first used the color.  Moreover, Milwaukee submitted evidence of more than four dozen third-party uses of the color red for saw blades. “This extensive evidence of use of the color red on saw blades by a direct competitor of Freud is evidence that purchasers of saw blades would be unlikely to differentiate between competing sources simply by viewing the color red on the saw blades. See BellSouth, 35 USPQ2d at 1558.”

The Board found that the presence in the market of red saw blades from numerous sources “is incompatible with a finding that the ‘primary significance of the registered mark to the relevant public’ of the color red is as a source-indicator pointing solely to Freud. See 15 U.S.C. § 1064(3).”

This evidence overwhelmingly demonstrates that the color red on saw blades is so common in the industry that it cannot identify a single source for saw blades for power woodworking machines or saw blades for reciprocating power saws. What is more, because the evidence establishes that the color red was widely used by others at the time Freud filed the underlying applications for each of its subject registrations and third-party use continues to the present day, the color red was generic for power saw blades when Freud applied for both of its marks and remains so now. Neapco, 12 USPQ2d at 1747; Kasco, 27 USPQ2d at 1506 n.7.

And so the Board granted Milwaukee’s petitions.

Acquired Distinctiveness: Although its finding of genericness was dispositive, the Board went on to consider, for the sake of completeness, Freud’s claim of acquired distinctiveness of the color red for the “blades for reciprocating power saws” of the second registration. The Board found that Freud’s proofs feel short.

The use of red by other saw blade sellers is longstanding and widespread. In light of this use by Milwaukee and third parties, Freud’s sales figures and marketing efforts, though extensive, cannot demonstrate consumer recognition of the color red as a mark for saw blades designating Freud exclusively as their source.

Fraud: Milwaukee alleged that Freud committed fraud in connection with its first registration by claiming that it was the exclusive user of the color red for saw blades, that its response to a request for information was deficient, that it failed to state the first use date for each item in the identification of goods, and that its Section 2(f) claim of acquired distinctiveness did not apply to all of the goods.

As to the exclusivity claim, the Board found that Freud “may have had a reasonable basis for believing that no one else had the right to use the mark in commerce, and its averment of that reasonable belief in its application declaration or oath was not fraudulent. Intellimedia Sports Inc. v. Intellimedia Corp., 43 USPQ2d 1203, 1207 (TTAB 1997).”

Although Freud’s response to the information request was “woefully lacking,” the Board found that Freud’s failure to explain the uses of the color red by other entities “is not fraudulent “unless Freud knew the other entities using substantially the same mark for substantially identical goods had superior rights (assuming red could serve as a source identifier for saw blades) to Freud. See Intellimedia Sports, 43 USPQ2d at 1206.” Milwaukee failed to prove by clear and convincing evidence that Freud possessed that knowledge.

As to Freud’s failure to indicate the dates of use for each item, the Board found this to be “at worst, akin to stating an erroneous date of first use, and does not constitute fraud.”

Finally, as to Freud’s failure to break out the individual goods in its Section 2(f) statement, Milwaukee failed to prove that Freud had an intent to deceive the USPTO, as required to establish a claim of fraud.

And so the Board rejected Milwaukee’s fraud claims

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TTABlog comment: Would you call this a cutting edge decision? Genericness seems to me to be the wrong pigeonhole for a proposed color mark. I think it would be better to rely on lack of exclusivity and failure to meet the high burden of showing acquired distinctiveness. But the Board has been on a genericness rampage lately.

See Professor Tushnet’s point regarding the Board’s resort to genericness. She notes that the first registration was more than 5 years old and therefore could not be challenged on the ground of lack of distinctiveness.

Text Copyright John L. Welch 2019.