On March 24, 2017, the U.S. Court of Appeals for the Ninth Circuit ruled that the term “red gold” may not be a generic term for jewelry and watches, and thus, may serve as a trademark. Specifically, the Ninth Circuit found that there were questions of fact that needed to be decided by a jury as to whether the term was generic.
In January 2011, Plaintiff Solid 21, Inc. (“Solid 21”) sued Hublot of America (“Hublot”), owned by Louis Vuitton, for infringement of its federally registered and incontestable trademark RED GOLD for fine jewelry made of a special alloying of gold with a distinct color. Below is an image showing the goods sold in connection with Solid 21’s RED GOLD mark:
(Hublot is not the only watch or jewelry manufacturer to be sued by Solid 21. Solid 21 also filed lawsuits against Swatch, Bulgari, Rolex, Chopard, and Breitling, among others, for infringement of its RED GOLD mark.)
Hublot argued the phrase “red gold” is generic when it comes to jewelry or watches. This means that it cannot function as a trademark, even if Solid 21 can show that consumers have come to associate this term with Solid 21 and its products. To support its argument, Hublot submitted extensive evidence that the jewelry and watch industry uses the term “red gold” as a generic term for jewelry made from a gold and copper alloy, where a higher percentage of copper is used making the jewelry more red in color. Hublot’s evidence included 12 patents using the term “red gold” to describe jewelry or watches, and 61 articles published in mainstream media or in jewelry trade journals using the term “red gold.” Hublot also submitted numerous declarations supporting the argument that the term “red gold” is used generically in the watch and jewelry industry. These declarations were from individuals working in the watch industry, an expert in the watch industry, and the President and CEO of a jewelry trade association stating that the term “red gold” is listed in the trade association’s database of jewelry terms as generic.
Conversely, to support its position that the term “red gold” is not generic, Solid 21 submitted a declaration from an expert linguist that the term “red gold” is not understood by consumers to be generic. Solid 21 also submitted declarations from consumers stating that they associate “red gold” with Solid 21 and its products and a declaration from an industry expert. The Ninth Circuit held that Solid 21’s evidence (which it found was improperly excluded by the district court) created issues of fact as to whether the term “red gold” was generic, and that these issues needed to be decided by a jury. If Solid 21 is able to convince the jury at trial that its RED GOLD mark is at least descriptive and not generic, then it will have the opportunity to present evidence that consumers have come to associate the RED GOLD mark with Solid 21 and its products. If it succeeds, it may be able to establish proprietary, protectable rights in the RED GOLD mark.
So what does this mean for the fashion industry? It is important to remember that the jury may decide that the RED GOLD mark is generic after all. However, if a brand owner uses the name of a color or incorporates a color name in its brand name, then this decision may be good news. The brand name incorporating or consisting of the name of a color may still be capable of functioning as a trademark, even if that color is used in connection with the goods. The brand owner may be able to build up goodwill in this color name and achieve a protectable mark if it can show that consumers have come to associate the color name with the owner and its products.
The downside of this decision is that it may be more difficult and expensive for those using what they assumed was a generic industry term, to defend themselves against trademark infringement claims.