The Board observed that “[t] he critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Relevant considerations include the commercial impression made by the design, the practices of the trade, and any evidence of distinctiveness. Since applicant did not claim that either mark has acquired distinctiveness, only the first two considerations came into play, and the issue at hand was whether the proposed marks are inherently distinctive.
Applicant argued that harvesters and other large farm equipment are not typically ornamented (unlike shirts, hats, bags, jewelry, or other fashion items). Visual presentation is not crucial to the decisions of purchasers. Therefore, the markings on these products are more recognizable as trademarks than other types of goods.
Applicant maintained that “most manufacturers brand their equipment with names, logos, color and other schemes that are large, often covering major portions of the side of the harvester, tractor or other product.” Thus applicant is following the customary practice in the industry.
The Examining Attorney contended that consumers typically do not perceive larger designs as trademarks. She noted applicant’s admission that harvesters are often ornamented by different colors or designs, and she asserted that “consumers are use [sic] to seeing trademarks for these types of goods, including applicant’s own goods, is of lettering, which maybe [sic] large, but is small when compared to the size of applicant’s goods.”
The Board observed there was no evidence of the commercial impression actually made by the proposed marks. The evidence did show, however, that applicant has branded machines with the combination of the unusual shade of green (claimed in this mark) with the word CLAAS in large, thick, red letters.
The record shows that Applicant’s equipment consistently displays the shade of green that is claimed as part of the proposed marks, but the Federal Circuit has observed that “color is usually perceived as ornamentation. While ornamentation is not incompatible with trademark function, unless the design is of such nature that its distinctiveness is obvious, convincing evidence must be forthcoming to prove that in fact the purchasing public does recognize the design as a trademark which identifies the source of the goods.” In re Gen. Mills IP Holdings, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017) (quoting In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985) (internal quotation omitted)).
The Board found that applicant’s “Y” designs “are simple and nondescript, especially when compared to the design marks in the third-party registrations that Applicant made of record to show that ‘marks similar to that of Applicant have been registered often at the PTO.'” (see the four marks shown below)
The Board concluded that the juxtaposition of the green design on the CLAAS product shown above, with the color white bearing the CLAAS mark, “appears to be purely aesthetic, and there is nothing in the record to suggest that the placement of the green “Y” designs on the goods will serve any purpose other than ornamentation.”
As to applicant’s arguments regarding the conventions in the trade, the Board found no evidence to support those arguments. The record “shows that farm equipment commonly bears colors and designs, but does not show that those combinations of colors and designs . . . would automatically be recognized as source-identifiers, not ornamentation.”
Finally, the third-party registrations made of record by the Examining Attorney “indicate that colors and designs appearing in various manners on farm equipment may be capable of functioning as marks, and may thus be registrable on the Supplemental Register, or may actually function as marks through the acquisition of distinctiveness, and may thus be registrable on the Principal Register. Applicant seeks Principal Register registrations based on the inherent distinctiveness of its proposed marks, however, and we find, on the basis of the record as a whole, that consumers are not likely to view Applicant’s green ‘Y designs’ as marks rather than as ornamentation.”
And so the Board affirmed the refusals.
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TTABlog comment: Since the marks at issue were not color marks per se, but color in a particular shape, they cleared the Qualitex hurdle and were capable of being inherently distinctive.
Text Copyright John L. Welch 2020.