Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 EDWARD WECK INCORPORATED
v.
IM INCORPORATED
September 13, 1990
Hearing: March 14, 1990
Opposition No. 78,161 to application Serial No. 619,048, filed August 26, 1986
Cooper & Dunham for Edward Weck Incorporated
Donald L. Dennison, William H. Meserole, David Pollack and Burton Scheiner for IM Incorporated
Before Rooney, Simms and Hanak
Opinion by Simms
Member
Edward Weck Incorporated has opposed the application of IM Incorporated, a New Jersey corporation, to register the color green assertedly used as a trademark for medical instruments, namely, forceps, scissors, scalpels, tweezers, surgical staple removers, needle holders, hemostats, razors, surgical clamps, circulation clamps, towel holders, surgical probes, needle separators and suture pullers. [FN1] The drawing of the application shows the mark on one of applicant's instruments, the outline, which is not part of the mark, being shown in broken lines. Applicant's goods are in fact disposable plastic instruments to which green pigment is added during manufacture.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
As grounds for opposition, opposer asserts that it makes and sells to the medical profession and health-related institutions a wide variety of surgical and medical instruments including some of the same instruments for which applicant seeks to register its mark. According to the pleading, opposer has an interest in using various colors to "describe and ornament" its instruments and that others in the field have used various colors including green for functional and ornamental purposes and to describe a characteristic or function of their products. Opposer charges that the color green is perceived to be ornamental in nature by the relevant public and is not recognized by them as a trademark which identifies source. Even if this color is capable of functioning as a trademark, opposer alleges, the color green has not acquired distinctiveness for applicant's products. In sum, opposer asserts that it has a right to use the color green for its medical and surgical instruments and that registrations to applicant will interfere with this right. In its answer, applicant has denied the essential allegations of the opposition but has admitted that others have used different colors for their products.
The record of this case consists of testimony (and exhibits) taken by both parties; discovery taken of applicant and made of record by opposer's amended notice of reliance; an article entitled "The Light Touch," from Psychology Today, also made of record by opposer's amended notice of reliance; and the application file. The parties have filed briefs and were represented by counsel at an oral hearing of argument.
Opposer makes and sells medical supplies and instruments. According to the testimony of Paul Barstad, opposer's assistant product director, opposer has manufactured and sold a green skin stapler for some time and has used green lettering to designate a certain size of stapler (wide). This witness also testified that he previously worked for a company which sold and continues to sell a green litigation clip cartridge and that that company also sold green sutures. There is testimony that various competitors of opposer are producing and selling various green medical and surgical instruments and devices such as the Deknatel skin stapler, which, according to opposer's testimony, is known by hospital personnel and sales representatives as "the green monster," the Pilling green cartridge, the U.S. Surgical green cartridge for internal stapling, Johnson & Johnson Products' green sutures and the Miltex green stethoscope. The latter instrument is apparently no longer being sold. Opposer's witness also testified that the most prevalent color of surgical scrubs and gowns, worn by surgeons, technicians and emergency room personnel, is green and that green bedding is also common in hospital surgical facilities. This witness was also aware that competitors of opposer sell products in colors other than green such as blue, gold, yellow, red, orange and black, and that, according to Mr. Barstad, color does not represent any particular company to hospital purchasing personnel.
*2 According to the discovery relied upon by opposer, applicant has admitted that other medical and surgical instrument manufacturers make and sell instruments in various colors. In fact, applicant itself makes instruments, such as tweezers and forceps, with black plastic, for Johnson & Johnson and produces blue scissors for two other companies. This discovery also demonstrates that in certain instances, color may perform a function. For example, in recent years red has been used to identify instruments and other medical equipment that have come into contact with AIDS patients. According to the testimony, the armed services also sometimes specify that some of their medical supplies such as wound dressings be made in camouflage or olive ("military green"), and green is often used to identify oxygen lines in hospitals and other health care facilitates.
The record also demonstrates that green is often used as the color of walls in operating rooms and other facilities in hospitals. Opposer has made of record an article from a magazine, the pertinent portion of which is quoted below:
"Eye-ease green" was developed to have a specific effect in a particular setting, worked well there and then was used widely elsewhere without any real justification. Lightning and color consultant Faber Birren notes that the color was originally developed during the 1930s for use in hospitals in Great Britain. Surgeons looking at red blood and tissue for a period of time saw disconcerting green (red's complementary color) afterimages when they glanced up at white walls, sheets, towels and garments.
To solve the problem, the walls, clothing and towels in the operating arena were all colored green. This seemed to help the surgeons concentrate and allayed their worries about visual difficulties while operating. While there was no reason to believe that "eye-ease green" would be valuable in other situations, it since has been used in everything from industrial cafeterias and schoolrooms to writing tablets.
Applicant has taken the testimony of Michael Porat, its manager for new product development. He testified that applicant has been making and distributing green-colored disposable plastic medical instruments since November 1980. According to the testimony, applicant's devices are made for it in Israel by a separate company, A.G. Pollak, Ltd. When asked why the color green was selected, Mr. Porat testified:
A. We had the problem to identify our products. We have decided to pick up a color which will be our color for the products, and we have decided to pick the green one ...
Q.# 133 And what was the reason for selecting green as opposed to some other color?
A. There was no particular reason. We needed one color and we decided that, first of all, we found out that green is not used by any other company in the market. And we decided to pick the green color. It could have been pink, it could have been red, it could have been many colors. We like the color green and we decided to pick the color green.
*3 Q.# 134 At the time you selected it, you did not know of any other company manufacturing an instrument in green?
A. Until today, I don't know about any other company manufacturing in green in the United States.
(Porat dep., 34-35)
Mr. Porat also testified that green is not a natural color of plastic and that adding green pigment is more expensive than some colors (but less expensive than some other colors). According to the testimony, when applicant introduces new instruments into the marketplace, the plastic portion of the instrument is made in other colors until it has been successfully trial-tested in the market, at which time the new product is changed to the color green. Applicant's goods are advertised in medical journals and newspapers and are promoted by brochures and at trade shows, where applicant's booth is colored green and decorated with green curtains, etc. Applicant's disposable instruments have been sold to hospitals, physicians, clinics, the U.S. Army and to dealers. Sales have increased from around $100,000 in 1981 to over $3 million in 1988, while advertising and promotional expenses have increased from around $20,000 to around $250,000 in the same period of time. At trade shows, applicant's representatives wear a hat which displays the slogan "Green Instrument People," and applicant has given away green pens with the same slogan. Applicant also uses green printing on its labels, envelopes and letterheads and uses green ink on its postage meter stamps.
While the majority of applicant's disposable instruments are produced with green plastic, Mr. Porat testified (as noted above) that applicant makes instruments in other colors for competitors (black plastic instruments for Johnson & Johnson and blue instruments for American Hospital Supply Inc. and Kendall). Indeed, from 1980 to 1983, applicant sold instruments in a variety of colors. Applicant's witness also testified that he has seen various medical devices such as stethoscopes in various colors, that other companies aside from Johnson & Johnson and American Hospital Supply sell disposable plastic instruments in various colors (Bussey in black, blue, and off-white, Medline in black, blue, white and pink, and Acme United in various colors), and that applicant makes and sells to the U.S. Army olive-colored or khaki-colored products (other than instruments). Also, applicant sells a few green-colored disposable instruments to original equipment manufacturers who re-label and re-package those goods as their own products. Mr. Porat testified that the color green for applicant's instruments is not "functional." Finally, to the witness's knowledge, such companies as Johnson & Johnson, American Hospital Supply, Baxter and Kendall do not claim that the colors used by them function as trademarks for their products, apparently because others use those very colors.
Based upon this record, opposer argues that the color green has been demonstrated to be purely functional because of its tendency to ease eyestrain. In its brief, 13, opposer sets forth its argument with respect to this utilitarian advantage:
*4 There can be no dispute that the color green in surgical theaters is functional as it reduces surgeons' eye fatigue and alleviates their seeing red spots after surgery. Green colored medical instruments blend in with the color scheme of green colored surgical theaters. Moreover, since green is the complementary color to red, a green colored medical instrument will contrast with red blood and organs when applied to the interior of a patient's body. Thus, a surgeon sees a green colored instrument better than other colors and the chance of a surgeon leaving an instrument inside a patient after surgery is reduced since the instrument more easily is seen.
Opposer has conceded, however, that there are alternative colors available and that there is no economy of manufacture in the use of this color. Opposer argues that even if applicant could show that its goods do not have this eye-easing functional nature and do not have functional utility, nevertheless applicant has failed to demonstrate that the color green has acquired distinctiveness for its surgical instruments. According to opposer, competitors have produced and sold green-colored medical devices prior to and since the filing of this application, applicant makes and sells its green instruments for repackaging and resale by others, thus contributing to the lack of distinctiveness of this color for its goods, and there is no admissible proof that relevant purchasers consider green-colored instruments to emanate from applicant. Opposer argues that it cannot be said that applicant has substantially exclusive use of this color on its medical instruments. Thus, while opposer concedes that color may function as a trademark, it argues that applicant has not met the heavy burden of demonstrating that it is a trademark in this instance.
Applicant, relying on the opinion of the Court of Appeals for the Federal Circuit in In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (1985), argues that opposer has not shown that the color green is functional or that there is a need for competitors to use this color in order to effectively compete, and that opposer's argument that green is functional because it makes applicant's instruments readily visible in contrast with the color of a patient's blood and internal organs is "ludicrous at best." Applicant's brief, 16. Applicant argues that the examples of third-party use of the color green "hardly evidence[s] usage of an overall color green for medical instruments." Finally, it is applicant's position that its use of this color on its instruments for over nine years, its use of this color as a dominant feature in advertising and business materials as well as on packaging for its goods, together with promotion as "The Green Instrument People," demonstrate that this color has acquired a secondary meaning for its medical and surgical instruments.
There is no inherent bar to trademark registration of the overall color of goods. In re Owens-Corning, supra, 227 USPQ at 417 and 420. Refusals to protect rights or to grant registrations for color marks based on the color depletion theory--that there are only a limited number of colors and that it is unwise to permit protection and thereby deplete the reservoir--have become fewer as courts "have declined to perpetuate [the theory's] per se prohibition which is in conflict with the liberating purposes of the [Lanham] Act." In re Owens-Corning, supra at 419.
*5 In order for us to find that the color green for applicant's medical and surgical instruments is functional, we would have to conclude that this color yields a utilitarian or functional advantage or that this color accomplishes economies in manufacture or use. It is also useful to consider whether alternative colors are available in order to avoid the fettering of competition. Considering the testimony and evidence of record, we conclude that opposer has failed to prove that the color green is functional as applied to applicant's goods.
First, it is not seen how the color green for applicant's instruments would serve the utilitarian purpose of easing eye strain. It is not realistic to believe that surgeons and assistants using applicant's instruments would look at those devices to relax their eyes in the same manner that one might briefly look at a pale green wall or ceiling to ease eye tension. Also, there is no evidence to support the argument that eye strain is somehow prevented or ameliorated by the use of green-colored medical instruments. Second, opposer's visibility argument--that applicant's instruments would be more readily visible when used inside a patient (and presumably less likely to be left inside)--is unsupported. Opposer in essence asks us to speculate upon this perceived utilitarian purpose for the color green. We will not do so. Finally, as opposer has now conceded, there is no support in the record for the argument that the color green may achieve any economy in manufacture. In fact, there is testimony that it is more expensive to color applicant's instruments this color than it would be to make them in some other colors. We also note that registration of this color would not deprive competitors of any competitive advantage or need. The fact that there are a variety of colors which competitors have utilitized may be viewed as evidence that applicant's color is primarily nonfunctional. We find, therefore, that the color green is not barred from registration on the basis of functionality.
Opposer has also charged that the color green has not acquired distinctiveness for applicant's instruments. In order for us to find registrability here, we would have to conclude that applicant has shown that the color green functions as a trademark--that is, that it has become distinctive of applicant's goods. In this regard, we note that the record supports the statement that it is relatively common in this field to use various colors for plastic medical and surgical instruments. Because of this fact, we believe that more evidence than applicant has submitted is necessary to show that green has become applicant's trademark. A difficult burden is usually present in demonstrating distinctiveness of a color mark under these circumstances.
Three other factors also weigh in our conclusion that applicant has failed to establish acquired distinctiveness. First, opposer has demonstrated that others have used and are using the color green for related products (e.g., the Deknatel skin stapler, known in the trade as "the green monster"). Applicant's use has therefore not been exclusive. Cf. In re Owens-Corning, supra at 422. Since others have used this same color, albeit a different shade of the color green, the relevant public is less likely to view the color as an indicator of origin than as mere ornamentation lacking in trademark function. Also, as opposer has pointed out, applicant has sold some of its green instruments to third parties for repackaging in separate kits of those third parties. To the extent that the testimony reveals that third parties are also selling as their own some of applicant's instruments, this practice detracts from the alleged distinctiveness of the color green as applicant's own trademark.
*6 Finally, while applicant has used the color green for approximately nine years (at the time of trial) and has sometimes promoted itself as the "Green Instrument People," the relatively small size of applicant's advertising expenditures and the limited extent to which that advertising is directed to the promotion of the color green as a trademark militate against the finding of distinctiveness. See Plastilite Corp. v. Kassnar Imports, 508 F.2d 824, 184 USPQ 348 (CCPA 1975). The fact that applicant has acknowledged that other colors used by applicant and third parties are not recognized as trademarks has also been considered. The paucity of probative evidence of consumer recognition as a trademark cannot be ignored.
Because we find that applicant has failed to establish that the color green functions as its trademark, we must sustain the opposition.
Decision: The opposition is sustained and registration to applicant is refused.
L. E. Rooney
R. L. Simms
E. W. Hanak
Members, Trademark Trial and Appeal Board