The TTAB affirmed the USPTO's refusals to register six design marks - comprising the color green applied to the top portion of a sprinkler head and contrasting with an adjoining portion - for lawn sprinklers, finding the proposed marks to be functional under Section 2(e)(5) and, alternatively, lacking in secondary meaning. In re Orbit Irrigation Products, Inc., Serial Nos. 85945749 et al. (January 31, 2017) [not precedential].

Functionality: A single color can be source-identifying (think pink fiberglass insulation), or it can be functional (black for outboard motors and floral packaging). [Or it could be neither - ed.]. Applicant argued that the color green is not essential to the use or purpose of the sprinkler heads, and does not affect cost or quality. See Inwood Labs. Nor do the Morton-Norwich factors indicate functionality.

However, a feature that is not functional under Inwood is still barred from registration "if the exclusive appropriation of that feature would put competitors at a significant non-reputation related advantage." FTD, citing Qualitex.

Here, there is a competitive need for lawn care product manufacturers to use the color green to help their products blend in with the landscape. Permitting applicant to exclusively appropriate the color green would put its competitors at a disadvantage.

Applicant pointed to the contrast in color between the green top and the sides of its devices, which calls to mind the Louboutin case, in which the Second Circuit found that the red-lacquered outsole on high heels served as a source indicator when it contrasted with the color of the adjoining shoe portion. The Board pointed out, however, that unlike such high heels, sprinklers commonly are found with green tops and contrasting sides, which helps them to blend with the landscape. Thus unlike in Louboutin, here the contrast in color serves a function.

It makes no difference that competitors could offer a variety of colors other than green, because to limit their options would be unfair. In short, registration of the proposed marks would put competitors at a significant non-reputation based disadvantage, and so the marks are functional under Section 2(e)(5).

Acquired Distinctiveness: For the sake of completeness, and assuming arguendo that the proposed marks are not functional, the Board considered applicant's Section 2(f) claim.

Applicant pointed to its twenty years of sales of green-topped sprinkler heads, its sale of more than 2.6 million units per year (for more than $25 million), its advertising expenditures in recent years of $3.5 million annually, and its "look for" advertising.

Applicant also provided declarations from three large distributors stating that they recognize the green-top sprinkler heads as indicating Orbit as the origin of the goods.

The Board, however, agreed with Examining Attorney Tasneem Hussain that Orbit's showing was insufficient. First, Orbit failed to show that its use of the color green was "substantially exclusive," as required by Section 2(f). "Given the ubiquity of use of the color green on lawn care products in general, and on competitors' sprinkler heads in particular, Applicant's lengthy use of the same color does not transform it into a source indicator."

Furthermore, applicant's sales figures evince the products' popularity, not necessarily the public's recognition of the color green as a mark. As to the "look for" advertising, applicant did not provide specific information as to how long and how widely it used this type of advertising. Finally, the three declarations had limited probative value, since they were conclusory form statements from a small segment of the market. There was no direct evidence of public perception of the color green as a mark.

The Board concluded that applicant did not meet its "unusually high burden" of proving that its proposed marks had acquired distinctiveness.

And so the Board affirmed the refusal.

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TTABlog comment: The sprinkler heads that I have on Cape Cod are black. But then, there's not much grass in my yard. Maybe they should be a sandy brown?

Text Copyright John L. Welch 2017.