In a rare decision resulting in trademark registration status for a colour mark, the Trademark Trial and Appeal Board (TTAB) has found the colour white to be registrable.(1)
Hodgdon Powder Company Inc applied for registration under Section 2(f) of the Trademark Act for the colour white for gunpowder, specifically for "preformed gunpowder charges for muzzleloading firearms", in the following form:
Hodgdon claimed "substantially exclusive and continuous use" of white for gunpowder in commerce for at least five years before it filed its application. Hodgdon had a previous registration for WHITE HOTS in standard character form for "gunpowder", and submitted evidence that the colour white in conjunction with the claimed goods had acquired distinctiveness. The examiner found Hodgdon's evidence of acquired distinctiveness unpersuasive and refused registration.
The TTAB reversed the decision, noting that while a mark "comprised of a single color alone" cannot be inherently distinctive, a product's colour can be protected as a trademark and acquired distinctiveness can be found for a colour in conjunction with a product. Gunpowder has historically always been grey or black and in Hodgdon's case, the white colour of its gunpowder did no more than identify its product. None of Hodgdon's competitors produced white gunpowder and for years Hodgdon marketed its product as "the only white gunpowder". Among the evidence that Hodgdon submitted in support of its claim of acquired distinctiveness was:
- a declaration attesting to Hodgdon's continuous use;
- an informal survey showing customer awareness of its exclusivity in the white gunpowder market; and
- several advertising samples and expense statements showing Hodgdon's continued marketing of its white gunpowder, high product sales and associated consumer awareness.
While the informal survey was found to be invalid for purposes of acquired distinctiveness, the TTAB found the remainder of Hodgdon's submitted evidence to be persuasive as to acquired distinctiveness.
Although Hodgdon was successful in its effort to obtain trademark protection for its white gunpowder, the process of obtaining colour registrations – especially registrations for a single colour – remains difficult. The registration in Hodgdon was the culmination of many years of targeted, persistent advertising and marketing efforts, while also ensuring that Hodgdon's gunpowder was the only white gunpowder on the market. Proof of acquired distinctiveness in the single-colour context typically requires long-term planning and significant expense.
For further information on this topic please contact Timothy J Kelly or Kathryn E Easterling by telephone (+1 212 218 2100) or email ([email protected] or [email protected]). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.