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The colors green and orange as used in Newport cigarette sales displays and packaging do not create a commercial impression separately from the actual words used in the display and thus are not eligible for registration as a trademark through acquired distinctiveness, the Trademark Trial and Appeal Board ruled July 15 (In re Lorillard Licensing Co., T.T.A.B., No. 76680117, 7/15/11).
Also agreeing with the trademark examining attorney's determination that the drawing submitted with the trademark application was unacceptable because it was a mutilation of the asserted mark, the board found no proof of the secondary meaning needed to register the mark for acquired distinctiveness.
Lorillard Tobacco Co., which markets Newport cigarettes, filed an application in 2007 with the Patent and Trademark Office seeking to register a trademark for its cigarette packaging and displays described as follows:
The mark consists of the colors green and orange in combination as applied to the packaging for the goods and displays associated with the goods. … The color green is used as the background color for the packaging and displays associated with the goods. The color orange is used to display textual elements with the green background field. No claim is made to the literal content of any particular textual element … Neither the package shape, nor the lettering, nor the wording form a part of the mark.
The examining attorney refused registration based on findings that the drawing submitted with the application did not constitute “a substantially exact representation of the proposed mark,” and that the colors as described did not function as a trademark.
Administrative Trademark Judge Ellen J. Seeherman first affirmed the conclusion that the drawing of the mark submitted by Lorillard was unacceptable. The drawing represented a cigarette sales display box, whose background color was green and on which appeared the text “Newport pleasure! Fire it up!” in orange-colored lettering. The lettering was outlined with dashed lines to indicate that it was not part of the mark for which registration was sought.
According to the board, this configuration effectively removed all of the orange appearing in the drawing. There was no orange-colored lettering left in the drawing; thus, the drawing was not representative of a mark comprising a green background with orange lettering.
The board said:
With respect to the refusal that applicant's proposed mark is a mutilation, there is no question, simply by reviewing the specimen and considering the description of applicant's mark, that applicant has excised the text shown in orange in the specimen from the orange color in which the text is shown, by depicting the text in the drawing in dotted lines. … Given the very nature of the manner in which the orange-colored text appears in the specimens, the words, including their sound when spoken and their connotation, clearly have an impact on the consumer, and would cause a consumer to view the “mark” shown in the specimens as consisting of the words “Newport Pleasure fire It Up!” and not merely the orange color in which these words appear.
To resolve this question, the board said that it must address the second grounds for refusal, which was whether the mark as applied for made any commercial impression separate from the commercial impression created by the actual text that appeared in orange. If this question should be resolved in Lorillard's favor, the board said, then that would also resolve in its favor the question of whether the submitted drawing mutilated the applied-for mark.
Lorrilard argued that its mark had acquired distinctiveness or secondary meaning, and thus that it was registrable under Section 2(f) of the Lanham Act, 15 U.S.C. §1052(f).
Lorrilard asserted that because its mark was not a descriptive mark it bore a low burden to establish secondary meaning. It drew this argument from a statement in Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988), that “the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.”
The board disagreed. “Because applicant is seeking to register what people could reasonably see as merely a color pattern on packaging, the burden to prove that this combination is viewed as a trademark for cigarettes is necessarily greater than this were, for example a surname,” the board said.
The board pointed to the statement in In re Chevron Intellectual Property Group LLC, 96 USPQ2d 2026 (T.T.A.B. 2010) (232 PTD, 12/6/10), that the degree of burden for demonstrating acquired distinctiveness “depends on the nature of the mark and the circumstances surrounding the use of the mark in each case.”
Thus, according to the board, “applicant has a heavy burden in this case to establish that the applied-for matter has acquired distinctiveness and is perceived as a trademark for its goods.”
Turning to the evidence of acquired distinctiveness in the record, the board cast doubt on the probative value of declarations detailing the advertising history of Newport and its sales. Furthermore, the board noted that the actual cigarettes and the boxes they are packaged in primarily use blue and white, not green and orange. Similarly, other packaging did not consistently use green backgrounds and orange lettering.
Furthermore, more than 10,000 customer declarations and 4,100 dealer declarations were not probative, according to the board. The board said:
The view of someone who has purchased only one pack of Newport cigarettes, or has purchased one or more packs of Newport cigarettes years ago, is not competent to reflect whether current purchasers of Newport cigarettes recognize the applied-for matter as a trademark. We are also troubled by the lack of information about the people who signed these forms, or the conditions under which they signed them, or their understanding of what they were signing.
The dealer declarations were more detailed, the board acknowledged, but they also lacked important information, such as “name or nature of the retail establishment, or whether the sale of cigarettes is a noticeable or significant part of the business.” Furthermore, the statements appearing in the form declarations were “rather vague and general.”
More detailed and informative declarations would have much more value, the board said, even if only 1,000 had been submitted rather than 10,000.
The board also rejected evidence of the use of color combinations as used in sports, on the basis that there was no showing that there was a tradition in the cigarette industry of identifying cigarette brands solely by color.
Finally, a range of parody advertisements submitted by Lorillard were also insufficient to establish secondary meaning.
“Although the evidence, taken in its entirety, shows that there is some consumer recognition that applicant uses the colors orange and green for its cigarettes, we cannot say that the evidence demonstrates that consumers will recognize any orange-colored text appearing on a green background as a trademark of applicant's,” the board concluded.
The board thus found that there was no showing that applied-for mark had acquired distinctiveness, and it affirmed the ruling that it did not function as a mark.
The board's opinion was joined by Administrative Trademark Judges Peter W. Cataldo and Angela Lykos.
Lorillard was represented by Howard A. MacCord Jr. of MacCord Mason, Greensboro, N.C. The PTO was represented by Teresa Rupp, trademark examining attorney, Alexandria, Va.
By Anandashankar Mazumdar
Opinion at http://pub.bna.com/ptcj/76680117Jul15.pdf
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