Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BRITISH SEAGULL LIMITED AND OUTBOARD MARINE CORPORATION
July 30, 1993
Hearing November 12, 1992
Opposition No. 80,900 to application Serial No. 73/724,973, filed April 27, 1988
Opposition No. 80,901 to application Serial No. 73/724,973, filed April 27, 1988
Robert E. Clemency of Michael, Best & Friedrich for British Seagull Limited and Outboard Marine Corporation.
Timothy J. Haller of Niro, Scavone, Haller & Niro for Brunswick Corporation.
Opinion by Cissel
On April 27, 1988 Brunswick Corporation filed an application [FN1] to register the mark shown below on the Principal Register for "internal combustion engines for boats," claiming first use in November 1963.
By amendment applicant noted that "(t)he mark consists of the color black as applied to the entire surface of the goods" and claimed registrability under Section 2(f) of the Trademark Act based on an allegation of twenty-four years of substantially continuous and exclusive use of the color black on its goods. Applicant further stated with respect to the drawing that "the phantom outlining of the configuration of the goods forms no part of the mark(,) but is merely intended to show position." Also by amendment, applicant specified "outboard marine engines" as its goods. The essence of applicant's claim is that the color black, as applied to outboard engines for boats, serves as applicant's trademark. Applicant submitted evidence which persuaded the Examining Attorney that the color had acquired distinctiveness and that black identified applicant as the source of marine outboard engines.
Following publication of the mark, two oppositions were filed. Opposition 80,900 was timely brought by British Seagull Limited, and Opposition No. 80,901 was timely filed by Outboard Marine Corporation (hereinafter "OMC"). The two proceedings were consolidated by stipulation of the parties prior to the trial because both plaintiffs take the same position, that black should not be registered as applicant's trademark for these products, and both opposers have produced outboard engines which are black.
As grounds for opposition, opposers assert that since before applicant's claimed first use of what it claims to be its trademark, opposers have manufactured, advertised and sold outboard motors which are painted black or a dark color which is not visually distinguishable from black; that other makers of marine engines have also sold black outboard motors; that the color black alone cannot function to identify applicant's goods and distinguish them from the goods of others; that the color black cannot be exclusively appropriated by applicant or anyone else as a trademark for outboard motors; that manufacturers and distributors of such products have a competitive need to use black on these goods; that applicant made misrepresentations of material fact to the Patent and Trademark Office during the prosecution of this application; [FN2] and that applicant has not established and cannot establish that the color black has become distinctive of applicant's outboard motors.
*2 The record in this proceeding is one of the largest ever submitted for consideration by the Board. The parties do not appear to dispute the basic description of the record as presented in opposers' brief (the testimony, exhibits and the evidence made of record by notices of reliance take six typed pages just to list, and include over three thousand pages of testimony, as well as over eighteen hundred exhibits). Objections to various materials abound, however. The objections will be discussed as the various evidential materials are mentioned in connection with the pleaded issues.
Notwithstanding the daunting size of the record and the extremely contentious adversarial conduct of counsel for the parties in this proceeding, the fundamental issues to be resolved by the Board are not great in number. Basically, we must determine whether the color black, as used by applicant on its goods, has met the standards for registration under the Lanham Act. Based on careful consideration of the evidence before us, the established legal precedents on this subject, and the arguments presented by the parties, we find that black is de jure functional as applied to marine outboard engines, and that, notwithstanding some degree of recognition in the marketplace that applicant makes black engines, the color black and other colors not readily distinguishable from black have been used on these types of products made and sold by several other business entities, so that black has not become distinctive of applicant's goods and therefore is not registrable as a trademark for applicant's goods. The facts supporting our reasoning are not seriously disputed, and they are discussed below as they apply to each issue.
Opposers pleaded and argued that the color black cannot function as a source indicator for applicant's goods to distinguish them from others because other manufacturers of these kinds of products have used black and other dark colors and have a competitive need to color their goods black. There is considerable evidence offered to support opposers' argument that although the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats.
Opposers argue that there is therefore a competitive need for other manufacturers to produce these goods in the color black in order to meet consumer demand. Opposers are trying to keep applicant from exclusive appropriation of a feature, a particular color, which has as its characteristic that it makes outboard engines more saleable in the marketplace for these goods because the appearance created by the color is more desirable from the perspective of prospective purchasers.
*3 In In re Owens-Corning Fiberglass Corporation, 774 F.2d 1116, 227 USPQ 417 (Fed.Cir.1985), the Court extended trademark protection to a single color for a product, holding that a traditional rationale for precluding registration was inapplicable to the facts of that case. The theory held not to apply there was the color depletion theory, which is that because of the finite number of colors available, to allow manufacturers to monopolize certain colors would hinder competition. Although the Court found this theory inappropriate in that case based on those facts, it acknowledged that color depletion could be a factor to consider under appropriate circumstances. See also: Kasco Corp. v. Southern Saw Service, Inc. ___ USPQ2d ___, (TTAB 1993). The Board noted subsequently in Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990), that when we consider whether a color is functional we must consider whether alternative colors are available in order to avoid the fettering of competition. If competition will be hindered, the color in question is de jure functional.
This de jure functionality must be distinguished from the disfavored concept of aesthetic functionality. See: In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394 (CCPA 1982). In the case at hand we are presented not with a design or configuration which is ornamental or simply more beautiful, but rather with a color which should be available for use by all manufacturers of these products because they need to use it to compete effectively.
The demonstrated advantages that black provides to purchasers of these products, are confirmed by the evidence that many different sources provide black engines or engines in dark colors which may be difficult to distinguish from black. We therefore hold that black, when applied to applicant's outboard marine engines, is de jure functional because of competitive need. If applicant were permitted to appropriate exclusively a particular color which makes these goods more marketable, competitors who could not color their products with similar colors would be at a competitive disadvantage. This is not a situation like the one in Owens-Corning, where no other maker of the product in question colored the goods. Here all other makers of outboard marine engines use one color or another. To limit their options by allowing applicant exclusive appropriation of one of the most marketable colors would be unfair.
Given our holding that black as applied to outboard marine engines is de jure functional because of the competitive need to use it or other similar colors, applicant may not register black as its trademark. Moreover, even if registration of black were not barred for this reason, then because colors are not inherently distinctive, applicant would still have had to establish that black has acquired secondary meaning as an indicator of applicant as the source of these goods, and applicant has not proved that this is so.
*4 The instant case is distinguishable from In re Deere & Co., 7 USPQ2d 1401, (TTAB 1988). In that case, the colors sought to be registered were conceded by the Examining Attorney to have acquired secondary meaning as indicating source in that applicnat, and there was no evidence that competitors had any need to use that applicant's color scheme in order to compete effectively.
The facts concerning applicant's use of the color black on outboard engines for boats are not seriously disputed. Applicant has produced Mercury outboard engines in only one color, black, since 1964. [FN3] The record establishes that sales and promotion of applicant's black Mercury engines have been extensive. Over a hundred million dollars worth of advertising has assisted applicant in making sales of three billion dollars worth of black Mercury engines since 1964. Approximately one of every five outboard engines sold during the 1980's was a Mercury engine. The record clearly supports the conclusion that Mercury has been a major player in this field of commerce for a long time, and that Mercury engines have been sold only in the color black for almost thirty years.
Applicant acknowledges that the color of a product per se is not inherently distinctive, and has accordingly sought to establish that black has acquired secondary meaning as applied to outboard marine engines as a result of extensive and substantially exclusive use and promotion by applicant. Applicant has attempted to show this secondary meaning in several different ways.
Before proceeding with the merits of the claim of distinctiveness, we must clarify a number of questions regarding the evidence we have considered. To begin with, during the ex parte phase of the prosecution of this application, applicant submitted materials which persuaded the Examining Attorney that the color had acquired secondary meaning. Numerous exhibits, affidavits, and a market survey convinced the Examining Attorney to publish the mark for opposition. These materials, with the exception of those made of record otherwise in this inter partes proceeding (in connection with testimony or by proper notices of reliance), have not been considered by the Board. While the application file is automatically part of the record in an opposition proceeding by means of Trademark Rule 2.122(b), the allegations made, and documents and other things filed in connection with the application, are not evidence in the inter partes proceeding on behalf of the applicant. See: Kellogg Co. v. Pack'em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff'd, 21 USPQ2d 1142 (Fed.Cir.1991); McDonald's Corp. v. McKinley, 13 USPQ2d 1895 (TTAB 1989). Accordingly, the materials submitted only in the ex parte effort to establish registrability under Section 2(f) of the Act were not considered in reaching our decision in this opposition proceeding.
*5 The evidence submitted in this proceeding, as noted above, is voluminous, and most of it relates to whether or not the color sought to be registered has acquired secondary meaning. Opposers have objected to much of the testimony and other evidence which applicant asserts support its claim. The Mantis survey is a key element of applicant's case. To a lesser extent are the testimony and/or associated exhibits of Harold, Mellenthien, Piper, DuCoty, Rowe, Cook, Borst and Matuschka.
Opposers argue that the Mantis survey is flawed in any event, but the essence of opposers' objections to the large body of evidence concerning secondary meaning is that applicant's responses to various discovery requests of opposers did not reveal applicant's intention to offer this evidence, but instead, mentioned only the application file. It is therefore asserted that these responses of applicant to discovery should have the effect of precluding applicant from introducing at trial any evidence which was not included with or referred to in the application file.
Opposers specifically refer to Interrogatories 31, 49, 50, 53 and 54. Copies of these inquiries and applicant's responses to them were made of record by opposers' March 4, 1992 notice of reliance. With the exception of Interrogatory 31, which related to likelihood of confusion, these interrogatories concerned the witnesses and evidence applicant intended to use at trial in order to attempt to establish that the color black has become distinctive of its goods. Applicant's responses to these interrogatories contained objections on the grounds that they were unduly broad, burdensome, cumulative, attorney-client privileged, or were subject to work product immunity.
Ordinarily, when a party simply fails to respond to discovery requests, that party is subsequently barred from introducing evidence which was properly requested by its opponent. Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 204 USPQ 820 (CCPA 1980). In the case at hand, however, applicant gave a partial answer and otherwise objected to opposers' requests. Applicant's answers and objections indicated that it would use a great deal of additional evidence, but that disclosure of all of it would be burdensome, etc.
A party is not required to disclose the entirety of its proposed evidence in support of its case during discovery. See: Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989); Polaroid Corp. v. Opto Specs, Ltd., 181 USPQ 542 (TTAB 1974); and American Optical Corp. v. Exomet, Inc., 181 USPQ 120 (TTAB 1974). Even if opposers' discovery requests had been proper, in circumstances where discovery is unreasonably cumulative, duplicative, or unduly burdensome, it will be limited. See: Micro Motion Inc. v. Kane Steel Co. Inc., 894 F.2d 1318, 13 USPQ2d 1696 (Fed.Cir.1990), and FRCP 26(b)(1).
*6 Applicant could have simply declined to answer opposers' interrogatories on the ground that it was not required to specify in detail the evidence it intended to present at trial. Instead, applicant provided some answers and objected to other questions on the grounds that the interrogatories were cumulative, burdensome, etc. Responsive to applicant's objections, opposers could have moved to compel more complete responses, or might have modified the requests so as to avoid applicant's objections. In view of the underlying impropriety of the interrogatories, in the absence of such actions by opposers, and in light of the outstanding objections by applicant, opposers will not now be allowed to claim that they were unfairly surprised that applicant has more evidence than that which was presented in the ex parte phase of the prosecution of this application. Opposers' objections to applicant's evidence of secondary meaning on the basis that such evidence was not produced responsive to discovery are therefore overruled. We have considered this evidence.
Additional objections to the testimony and/or exhibits of Harold, Mellenthien, Piper, DuCoty, Rowe, Cook, Borst, and Matuschka are made by opposers on a variety of grounds. Lack of foundation, failure to provide underlying documentation for either testimony or exhibits, improper assertion of privilege, and the aforementioned failure to make disclosures responsive to discovery requests were some of the bases for opposers' objections. Applicant argues, among other things, that opposers failed to pursue their objections promptly.
Apart from the arguments and the particular merits of each of these objections, even when we give these materials our full consideration and consider them to establish the facts which they are asserted to prove, all they do is shed some light on the reasons why some people know that applicant makes black outboard marine engines. As discussed in more detail below, recognition of this fact is not inconsistent with sustaining this opposition. Accordingly, the Board has considered the objected-to testimony and exhibits as if they were not improper.
Opposers additionally criticize the Mantis survey on a basis which is different from the procedural objection based on the discovery responses. Opposers contend that this study, which applicant commissioned during the course of this proceeding, does not establish that the color black has acquired secondary meaning as an indicium of the source of applicant's engines. The testimony of opposers' witness Robert Sorensen, a well-known survey expert, raises questions as to whether the conclusions reached by Mr. Mantis are based on a survey which is "fatally flawed." Opposers assert that the survey responses were based on aided awareness.
The Mantis interviewers questioned owners of outboard engines or prospective owners of them outside boat shows. Interviewees were shown a photo of a Mercury outboard engine, but the photo had been touched up to remove the striping and the trademark "MERCURY," leaving the engine entirely black. Interviewees were asked whether they associated the color of the engine with one particular company or with more than one company. Those who responded that they associate the color with one particular company were then asked who they believed manufactured the engine.
*7 Opposers contend that the photo used to stimulate responses provided additional information to those interviewed because of the size, shape, and configuration of the engine, and that these factors skewed the responses in favor of applicant's position. Opposers argue that the interviewers should not have used a photograph at all, but rather should simply have asked whether the interviewee was familiar with outboard motors, and if so, what outboard motor manufacturer, if any, makes black ones. Opposers also challenge the Mantis survey based on the fact that Mr. Mantis did not personally attend or supervise the interviews, and that the interviews were conducted right outside the boat shows wherein applicant's black engines may have been extensively displayed and promoted. The crux of all of opposers' arguments concerning the survey is that the interviewees may have had their awareness of applicant as the source of black engines aided or increased by the way the survey was conducted.
As applicant notes, citing T.J. McCarthy, Trademarks and Unfair Competition, (2d ed. 1984) § 32.50 at 779, it is "notoriously easy" for one survey expert to tear apart the work of another. Even with this in mind, however, applicant attaches great significance to the fact that opposers did not conduct their own survey in an attempt to avoid the alleged pitfalls of the Mantis survey.
Opposers clearly had no such obligation. The ultimate burden of establishing secondary meaning is always on an applicant. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, (Fed.Cir.1988). Moreover, even if the words proposed by Mr. Sorensen were to be used in another survey in an effort to satisfy opposers, opposers could still challenge that survey based on the contention that use of the word "black," instead of a graphic stimulus colored black, might skew the results in light of applicant's use of the word as part of its registered trademark "BLACK MAX" and as part of the name of a fictitious character named BLACK MAX who has been used in promoting and advertising applicant's products.
We recognize the practical difficulty in creating and conducting a survey on this issue which could not be subject to at least some retrospective criticism, but even if we were to resolve the issue of whether the Mantis survey was based on aided awareness in favor of applicant, we would nonetheless have to conclude that the survey does not establish that black has acquired secondary meaning as an indication of applicant as the source for all black engines.
The problem we have with the survey is that while the survey does establish that a large portion of interviewees are aware that applicant makes black outboard marine engines, the survey does not provide convincing proof that these people believe that all black engines come from the same source. The interviewees in the survey were presumably not well versed in the legal significance trademark lawyers would attach to the phrase "associate with one particular source." We think it is likely that when these consumers responded affirmatively that they associated the color black with one particular company, what they were communicating was that they could recall only one company that made black engines, rather than that they were able to name more than one such company. In fact, they may have known only one company which made outboard marine engines at all, irrespective of what color paint they bear. Even if the former were the case, i.e., that the question was interpreted as asking if they could identify a maker of black outboard engines, the affirmative responses at best would support the conclusion that a majority of those surveyed knew that applicant makes black engines. That interviewees could recall that applicant makes black engines is not surprising in light of applicant's sales and advertising, its market share, and the length of time that it has sold black engines.
*8 Applicant has sold large numbers of its engines in a wide variety of sizes for almost thirty years in only one color: black. As noted above, applicant has spent over a hundred million dollars advertising its engines, all of which have been black, and three billion dollars worth of these products have been sold. This extensive presence in the marketplace is bound to create recognition of the fact that applicant's engines are black. The evidence also shows that while applicant is not the exclusive purveyor of black outboard engines, applicant is responsible for the majority of them. That a large portion of the relevant purchasing public knows applicant makes black engines is understandable under these circumstances. Applicant would have us conclude that its large market share and extensive advertising showing black engines has created secondary meaning for the color as a source indicator, but the evidence of applicant's use and promotion of the color explains only why a large portion of those interviewed in the Mantis survey knew that applicant makes black engines. This evidence does not prove that these people believe that all black engines come from applicant or from any single source. It proves only that responsive to the survey question, they could name applicant as a maker of black engines.
Moreover, applicant's evidence of the advertising of its goods does not convince us that black functions as a trademark for applicant's outboard engines. This evidence does include an excellent example of advertising specifically promoting black in connection with applicant's engines. The advertisement shown on the first three pages of applicant's brief is a textbook example of how to promote a color as a trademark. This copy was taken not from printed advertisements which were published in magazines or newspapers in general circulation or which were circulated to boaters in general, however, but rather was taken from applicant's 32-page 1986 catalogue, so its effect on the entire range of prospective purchasers of outboard engines is not as great as might otherwise have been the case. Although applicant claims that distinctiveness is also established by the fact that it has consistently shown its black engines in all of its other advertising, such activity does little to support the distinctiveness claim for the color without language in the advertisements specifically touting the color as a source indicator. We note also that applicant has shown its goods in colors other than black in some of its advertisements.
In summary, based on applicant's relatively small amount of promotion of the color as a trademark, we cannot conclude that the advertising activities of applicant have created secondary meaning for black as applicant's trademark.
Several other factors also lead us to conclude that black as applied to the outside of marine outboard motors has not acquired secondary meaning indicating applicant as the source of all black engines. To begin with, the record establishes significant use on engines by others, of black and colors which are so close to black that they are unlikely to be distinguished from black. Applicant itself is responsible for some of this, in that it manufactured black engines for sale by a retail merchant under the merchant's own trademark, and a subsidiary of applicant has sold black engines under the subsidiary's own mark. When the party which claims that matter has become distinctive of its goods is faced with use by others of the same or similar matter on the same goods, that party has a difficult burden to meet. Levi Strauss & Co. v. Genesco, Inc., 840 F.2d 1579, 222 USPQ 939 (Fed.Cir.1984). When such a party has sold its own goods, bearing a color which it asserts has become distinctive of its goods, to third parties for resale to the consuming public as the products of those third parties, such practice detracts even further from the alleged distinctiveness of the color as that party's trademark. Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990).
*9 The record shows not just that other black and near-black engines made by others have been on the market, but it also explains that possible reasons for this include the appearance benefits discussed above.
Turning back to the use by others of black and colors unlikely to be distinguished from black, we note that opposer Seagull has continuously advertised and sold primarily black outboard motors in the United States since 1960, which antedates applicant's use of the color black on its engines by several years. Applicant argues that Seagull's sales are de minimis and that Seagull's engines have been only mostly black, with some parts either left unpainted metal or painted, but not painted black. While the presence in the U.S. market of Seagull's engines has not been great and the engines in question are not entirely black, Seagull's sales here are not insignificant, and these engines must be considered to be primarily black, if not entirely black.
A much more significant use of the color black on outboard engines has been by Sears, Roebuck & Co., the nationwide retailer which has sold marine outboard engines through its department stores and also has sold them by means of mail-order catalogues. Like applicant, Sears has sold engines which are black over the entire outer surface except for the trim and the word used as a trademark. Sears has sold black outboard engines since 1982, and sales and advertising of them has been extensive. They are offered in a range of power outputs, from 1 1/2 - to 15-horsepower, and compete directly with the lower-powered range of Mercury engines.
Of particular note is the fact that although Sears' name and the "GAMEFISHER" trademark appear on these engines, applicant is one of three different manufacturers (along with Eska and Tanaka) which have supplied "GAMEFISHER" outboard motors to Sears. Applicant's subsidiary, U.S. Marine Corp., which manufactures "FORCE" brand outboard motors, provided black engines to Sears for sale under the trademark of Sears. In other words, applicant not only is not the exclusive user of black on such goods, it has actually itself contributed to the widespread use of the color, by a competitor, by producing black motors which are sold by Sears without any reference to applicant as the manufacturer of them. Such action by applicant is plainly contrary to applicant's claim of substantially exclusive use.
The record also establishes not only that opposer OMC has produced, promoted and sold black or dark colored engines, including "dark metallic charcoal" ones (the JOHNSON GTs), but also that OMC has produced for Tracker, one of the largest sellers of boat/motor/trailer packages, black engines which bear the marks "TRACKER/JOHNSON" and "TRACKER/EVINRUDE."
In summary, the record shows that during the same time that applicant has used only black on its engines, there has been extensive use of black and closely-related dark colors [FN4] by others in the same market, and that some of these engines were actually produced by applicant for others to sell under their own marks. In the face of this third-party use, the claim of substantially exclusive use by applicant does not hold up. As the Court noted in Levi Strauss & Co. v. Genesco, Inc., supra., (at 940 and 941): "When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness upon which purchasers may rely is lacking under such circumstances." We reiterate that applicant has further diminished the alleged distinctiveness by itself manufacturing some of those black engines sold by others under their own trademarks.
*10 The extensive use by others of the feature sought to be registered not only diminishes the credibility of applicant's claim of distinctiveness, it gives credence to our interpretation of the Mantis survey. It would be unreasonable for such a large portion of prospective purchasers to attribute all black outboard engines to applicant in the face of the established use of black, and colors indistinguishable from black, by others.
Each party argues that its position in this proceeding is supported by In re Owens-Corning Fiberglass Corporation, supra. We agree that that case enunciates the principles upon which the case at hand must be decided. In Owens-Corning the color pink was shown to have become distinctive of insulation made by the applicant based on the record of extensive and exclusive use and promotion of the color pink by the applicant. Significant factual differences in the case at hand lead us to a different conclusion here. As opposed to the instant situation, where all outboard engines are painted one color or another, and many have been sold by others in the same color sought to be registered by applicant, in the Owens-Corning case there was no need to color insulation at all, and no other maker of fiberglass insulation had used pink or any other color on its product. The Court specifically acknowledged that color performed no nontrademark function for insulation. Additionally, coloring insulation pink not only added an additional step and concomitant costs to the insulation manufacturing process, it did not result in a product which was more visually appealing or more advantageous to the purchaser of it. Here the record establishes not only that engines colored black and related dark colors are more marketable, but also that such colors are widely used by others. In the Owens-Corning case, based on a record which established absolute exclusivity of use, with no use of any color whatsoever by any competitor, and with tremendous amounts of promotion directed specifically at associating the color of those goods with that applicant, the Court agreed that registration was appropriate, emphasizing that the case had been decided on its own particular factual record. In the case at hand, the facts established by the record are so different that application of the same legal reasoning results in the opposite conclusion.
Notwithstanding that consumer recognition of the fact that applicant makes black engines has been demonstrated, because of use by others of the same or closely related dark colors, some of which use was on products which applicant itself made to be sold under the trademarks of others, registration to applicant would not be proper. Accordingly, even if the color black were not de jure functional because other manufacturers use, have used, and need to use black and other colors which are not readily distinguishable from black in order to compete effectively, applicant has failed to prove acquired distinctiveness for the color black in light of its widespread use on goods attributed to sources other than applicant. The oppositions are accordingly sustained and registration to applicant is refused.
Members, Trademark Trial and Appeal Board
FN1. Serial No. 73/724,973.
FN2. This pleaded ground was not supported with either further argument or any evidence, so the Board has not considered opposers to have continued to assert it.
FN3. It is interesting to note that applicant's claim is that the entire surface of its engines is black. The testimony and evidence make it clear, however, that the "MERCURY" trademark and various striping decals are exceptions to this claim. Applicant has never sold an all black engine. Notwithstanding this admitted fact, however, opposers have not pleaded that registration is improper because applicant has never used the mark it claims. We have therefore proceeded as if applicant's claim is that its trademark is the color black as applied to the surface of outboard engines except where stripes and the "MERCURY" trademark appear over the color black. The essence of applicant's contention is clear: that applicant is recognized as the source of black outboard engines irrespective of the word marks or decorative stripes which also appear on such products.
FN4. The parties elicited testimony and provided argument concerning differences and similarities among a range of dark colors from "gunmetal grey," "charcoal," and "dark metallic charcoal," to dark blues and browns, etc. There is sufficient evidence of record for us to conclude that, putting semantics aside, there are a number of hues and shades which are not easily distinguishable, particularly from distances of greater than a few feet or in less than optimal lighting.