When you think of green and yellow farm equipment, do you think of a John Deere tractor in a half-acre field? Deere & Co. contended yes in its trademark lawsuit.
The Quad-City Times recently reported that a U.S. District Court in Kentucky ruled in favor of Deere & Co., on all its claims, and banned competitor South Dakota-based FIMCO, Inc. from using the John Deere colors on its agricultural sprayer equipment.
In 1988 and 2010, Deere & Co. registered its color combination, well known since the 1960s, for a range of its gardening and agricultural equipment.
The distinction, by the way, is the color combination and not the individual colors. The judge found that competitor FIMCO, Inc. was welcome to paint its equipment green or yellow, but not green and yellow, and gave the company 60 days to file a plan for complying with the ban.
Digging deeper into this case …
Deere & Co. used the “obscure doctrine” of “aesthetic functionality” from the Lanham Act as its defense, which the firm Troy & Schwartz summarizes:
“A product feature is aesthetically functional ‘if it constitutes the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product. . . . ”’ Int’l Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir. 1980).”
But, says the firm, the Lanham Act doesn’t actually list color alone as a protectable mark. The Federal Circuit presiding over the 1985 case of re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985) “became the first court to find that a color could be protectable as a trademark if the owner could establish that the color [or color combination] had acquired distinctiveness or, secondary meaning.”
Troy & Schwartz adds that in U.S. Supreme Court’s decision in Qualitix v. Jacobson Products Co., 514 U.S. 159, 174 (1995) was significant in that it clarified for the circuits that a trademark could consist of a color only.
“In finding for the plaintiff, SCOTUS concluded that the Lanham Act did not forbid usage of color as a trademark and that color(s) could reasonably serve as marks once they had acquired distinctiveness (secondary meaning) as long as their use was nonfunctional.”
But, says the firm, this decision didn’t “open the floodgates” to protect all color marks.
“This is so because color per se is not protectable and colors that serve some useful purpose on products will be found to be functional and not protectable.”
The firm then brings us around to matter of aesthetic function and color as raised in the Deere & Co. case.
After Deere & Co. sued, “FIMCO, Inc. counterclaimed that Deere could not assert its exclusive right over the green and yellow combination based on the doctrine of aesthetic functionality because the sole right to use this color combination puts competitors ‘at a significant disadvantage because purchasers of agricultural products prefer to have equipment in colors similar to their tractors.’”
As we now know, the court sided with Deere & Co., adding to the company’s “long haul to color mark protection.”