A recent federal district court decision indicates that a business may be held liable when it chooses a trademark with the intent of causing confusion with an existing mark. The decision in Kerr Corp. v. Freeman Mfg. & Supply Co., 2007 WL 2344752 (N.D. Ohio 2007), indicates that choosing a mark with the intent to cause confusion may, by itself, be sufficient to establish an inference of confusing similarity. The decision gives companies yet another reason to be wary of potential legal consequences when selecting a trademark.
Beginning in the late 1970’s, Freeman Manufacturing & Supply Company (“Freeman”), developed original formulas for colored injection wax, optical soluble wax, and flake-form wax products. Kerr Corporation (“Kerr”), sold color-coded, flake-form injection waxes for jewelry and optics, which were manufactured by Freeman. In the mid 1980’s, the two companies entered into a development agreement under which Freeman would research and develop wax technology for projects proposed by Kerr in exchange for a monthly consulting fee. Freeman later began to compete with Kerr in the sale of colored wax products, flake-form wax products, and other items. Kerr marketed the colors at issue as “Tuffy Green,” “NYC Pink,” and “Flex-Plast,” while Freeman began marketing those colors as “Tuf Guy Green,” “Filigree Pink,” and “Flexible Blue.”
Kerr sued Freeman for trademark infringement under the Lanham Act, and Freeman moved for summary judgment on the claims. Kerr also asserted claims under state deceptive trade practices law and other common law causes of action. The court ruled that “Kerr’s attempt to protect basic color choices in the manufacture of products is without merit.” The court also rejected other attempts by Kerr to invoke the Lanham Act to protect its product designs, noting that “where the design feature is related to the utilitarian function of the product, such design cannot be protected.”
The court, however, did agree with Kerr that Freeman’s use of the “Tuf Guy Green” name could be a violation of Kerr’s trademark “Tuffy Green.” Kerr’s use of the fanciful modifier “Tuffy” rendered the name partially arbitrary. An arbitrary mark does not require a showing of secondary meaning, even when it involves colors.
In analyzing this issue, the court indicated that “if a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity.” The court noted that “to the ordinary consumer or reasonable juror, ‘Tuffy’ and ‘Tuf Guy’ are similar enough in appearance, spelling, and suggested meaning to result in some confusion as to origin, and the question is begged: Why else would Freeman have chosen such a similar color name, if not to confuse consumers into mistaking its product for Kerr’s?” Because a jury could conclude that the name was selected to cause confusion, it was inappropriate to grant summary judgment on that claim.
The court went on to reject the rest of Kerr’s claims regarding some of the names chosen by Freeman for its products. While color alone may sometimes meet the basic legal requirement for use as a trademark, color is generally merely descriptive. To invoke the Lanham Act, it is necessary to demonstrate that a color name has achieved a secondary meaning that distinguishes the company’s goods and identifies their source, without serving any other significant function. The court concluded that the product names “Super Pink,” “Aqua Green,” “Ruby Red,” and “Turquoise,” which were merely descriptive of wax color and quality, did not carry any secondary meaning that would support invocation of the Lanham Act.
The decision in Kerr serves as a reminder that intent in choosing a trademark can be significant. If it appears that a similar name was chosen with the intention of confusing consumers, that, by itself, may be sufficient to establish liability for trademark infringement.