Color for Safety Not a Trademark
The US Court of Appeals for the Eighth Circuit has affirmed the cancellation of a trademark covering chartreuse-colored water hoses, finding that the color is functional because it improves visibility and enhances safety.
Weems Industries, Inc. had sued competing water hose manufacturer Teknor Apex for trademark infringement and other claims, asserting a federally registered trademark covering the chartreuse color used on its water hoses.
However, Teknor countered that the color was functional and sought cancellation of the registration, also requesting attorneys’ fees.
The district court agreed with Teknor, finding that chartreuse served a functional purpose because the bright color made hoses more visible against dark grass and therefore improved product safety.
The district court also concluded that Weems had not established acquired distinctiveness in the color, cancelling the registration and awarding Teknor approximately $3 million in attorneys’ fees.
The fee award was based on three categories of conduct: Weems’ lack of candor before the United States Patent & Trademark Office, its conduct during the litigation and trial, and its continued reliance on an incorrect interpretation of trademark functionality.
The Eighth Circuit reviewed the district court’s functionality determination for clear error, explaining that a product feature is functional and therefore not subject to trademark protection if it is essential to the product’s use or affects the product’s cost or quality.
A feature that improves product safety may affect product quality and therefore be functional, and the record contained substantial evidence supporting the district court’s finding that chartreuse improved hose visibility.
Weems’ own promotional materials described the visibility and safety benefits of the color, and the record included patent-related materials describing the utility of chartreuse and expert testimony addressing the color’s visibility.
The Eighth Circuit rejected Weems’ argument that a feature is functional only if it improves the mechanical operation of the product, explaining that functionality is not limited to whether a feature makes a product operate better.
The Court also considered the attorneys’ fee award, which was based on the totality of the circumstances, including the substantive weakness of Weems’ position and the manner in which the case was litigated.
They upheld the district court’s finding that Weems had failed to disclose marketing materials to the USPTO that described the safety benefits of the chartreuse color, and that Weems had objected without adequate basis to most of Teknor’s exhibits.
The Court also noted that key Weems witnesses gave false testimony at trial, and that the district court had accounted for Teknor’s own conduct by reducing the requested fee award by 20%.
Considering the case as a whole, the Eighth Circuit concluded that the district court did not abuse its discretion in finding the case exceptional or in awarding approximately $3 million in fees.
In practice, this development means that companies like Weems Industries will need to reassess their use of trademark protection in product design, ensuring that any colors used are not functional and do not affect product quality or safety.
The fee award serves as a reminder of the importance of candor and proper conduct during litigation, and the potential consequences of failing to disclose relevant information or relying on incorrect interpretations of the law.
Reporters on the scene noted that the Eighth Circuit’s decision will likely have implications for future trademark cases, particularly those involving functional product features.
The case highlights the need for companies to carefully consider the functionality of their products and the potential impact on trademark protection, as they handle the complexities of compensation fund payouts.
It is a significant ruling.
