“White” Color MarkJuly 18, 2016

In In re Hodgdon Powder Company, Inc., the TTAB overturned a prior refusal to register a color mark for gunpowder. In doing so, the TTAB found that Hodgdon Powder Co. had proven acquired distinctiveness under Section 2(f) of the Trademark Act of 1946, 15 U.S.C. § 1052(f), for the color “white”as applied to gunpowder in International Class (IC) 13. The description of the mark included “The mark consists of the color white applied to gunpowder. The broken lines depicting the configuration of the goods indicate placement of the mark on the goods and are not part of the mark‚¬.               

Hodgdon Powder Co. filed for the “white”color mark as having acquired distinctiveness based on substantially exclusive and continuous use of the color white on the goods for at least five years immediately prior to filing of the trademark application. However, the Examining Attorney maintained throughout that the color white used by Hodgdon was not inherently distinctive and that the evidence provided by Hodgdon of acquired distinctiveness was insufficient.

Trademark law states that “[a] product’s color standing alone may qualify for trademark protection.Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161, 1162 (1995). However, marks comprised of a single color alone are never inherently distinctive.Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S.  205, 54 USPQ2d 1065, 1068 (2000). The greater the descriptiveness or non-distinctiveness of the proposed mark, the greater the burden on an applicant to demonstrate acquired distinctiveness.See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d at 1008 (“the greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning‚¬).In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985) (“By their nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.‚¬); In re Lorillard Licensing Co., 99 USPQ2d 1312, 1316 (TTAB 2011).

The TTAB examined the history of gunpowder. “Gunpowder”can be defined “an explosive mixture, as of potassium nitrate, sulfur, and charcoal, used in shells and cartridges, in fireworks, for blasting, etc.”Hodgdon submitted that the white color served no purpose other than for identifying Hodgdon’s product. Hodgdon argued that white gunpowder was an anomaly and was contrary to the consumers’ expectation for the appearance of the product. In fact, gunpowder may also be referred to as “black powder‚¬. The TTAB found evidence that gunpowder has always been gray or black to favor registration of Hodgdon’s mark based on acquired distinctiveness.  

Hodgdon also provided extensive sales and advertising data for the product to support their argument for acquired distinctiveness in the mark. The evidence included dollar amounts spent on advertising and the amount of circulation of said advertisements to consumers. Sales data showed over $3,500,000 in sales of the “white”gunpowder since 2008. Hodgdon also spent a large amount of money on advertising that included the claim that Hodgdon sells “the only white gunpowder”and Hodgdon owns a registration for the mark WHITE HOTS (U.S. Reg. No. 3,544,042) for “gunpowder”in IC 13.

While “color marks”may be difficult to obtain in some instances, this shows that with enough evidence of ales and advertising over a period of five years or more, an objection to the registration of a color mark can be overcome!

The full opinion may be found here.

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