IP Law Daily, TRADEMARK—TTAB: Red mark for fence post tops is not confusable with red, white, and blue fence post mark, (Aug 14, 2024)

By Cheryl Beise, J.D.

The differences in in appearance of the parties’ color marks as applied to metal fence posts was dispositive in dispelling confusion.

A company that owns a Principal Register registration for the color red as applied to the top of metal fence posts was not entitled to cancel a Supplemental Register registration for the colors red, white, and blue for metal fence posts, the Trademark Trial and Appeal Board has held in an opinion designated as precedential. Although the goods were identical and presumed to travel in the same channels of trade to the same purchasers, the differences in the visual appearance of the color marks outweighed the other likelihood of confusion factors. While both parties’ marks featured the color red at the top portion of the fence posts, the parties’ marks evoked different commercial impressions because of the additional colors in the respondent’s mark (Keystone Consolidated Industries, Inc. v. Franklin Investment Corp., No. 92066927 (T.T.A.B. Aug. 12, 2024)).

Respondent Franklin Investment Corp., DBA Franklin Industries (“respondent” or “Franklin”), owns a registration on the Supplemental register for a tri-color mark for “metal fence posts” in International Class 6 (“Red, White and Blue Fence Post Mark”). The mark is described as consisting of “a metal fence post with a blue bottom, white middle, and red top.” Petitioner Keystone Consolidated Industries, Inc. (“petitioner” or “Keystone”) sought cancellation of Franklin’s color mark on the ground of likelihood of confusion with Keystone’s color mark for “metallic fence posts” in Class 6 (“Red Top Fence Post Mark”). The registration states, “[the] mark consists in coloring a short portion of the upper end of the post red.”

Priority. The Board explained that in a cancellation proceeding where a petitioner owns a Principal Register registration (or can claim the benefits of a Principal Register registration, as was the case here) and respondent owns a Supplemental Registration, the Section 7(b) presumptions apply only to the petitioner. The petitioner’s priority was accordingly established for the goods identified in its pleaded registration for its Red Top Fence Post Mark.

Factors favoring a findingof confusion. The Board found that the parties’ metal fence posts are identical and presumed that the channels of trade and classes of purchasers for the goods were the same. The factors relating to the similarity of goods, channels of trade, and classes of purchasers weighed in favor of a finding of likelihood of confusion.

Neutral factors. The Board found that the sophistication of purchasers factor was neutral. While the record showed the fence posts were used on agricultural properties, there was no information in the record about purchasing conditions and pricing. The Board also deemed factors relating to conceptual and commercial strength were neutral. Because color marks applied to products or portions of products such as Petitioner’s Red Top Fence Post Mark are not generally distinctive, the petitioner’s mark is inherently weak. After evaluating the petitioner’s evidence—including long use of over a hundred years and combined advertising figures—but with no sales information, the Board found that the evidence was “insufficient to support a finding of commercial strength of the petitioner’s product line of fencing and fence posts featuring the color red.” Moreover, there was no evidence of third-party use of red fence post marks. The absence of actual consumer confusion was also neutral, in the Board’s view. In addition, there was no evidence in the record to show that the respondent intentionally sought to trade on the petitioner’s goodwill by coloring the top of its fence post red in combination with the colors white and blue, the Board observed.

Similarity of marks. The Board turned to the similarity or dissimilarity of marks factor. The Board explained that when the marks at issue are color marks, “the similarity of the marks must be decided primarily on the basis of visual similarity, which has been described as a ‘subjective eyeball test.’”

The petitioner argued that the parties’ marks were similar because the color red in both marks was featured at the top of fence posts.

Visually comparing the parties’ marks, the Board concluded that they were more dissimilar than similar. The respondent’s Red, White and Blue Fence Post Mark was the claimed combination of the colors red, white and blue; thus, the commercial impression was engendered by the use of all three colors and not just the color red on the top portion of the mark. The Board determined that the parties’ marks evoked different commercial impressions because of the additional colors in the respondent’s mark. “Consumers will perceive Respondent’s three-color mark in its entirety as creating a different commercial impression than Petitioner’s single-color mark which is the color red alone,” the Board said.

Weighing the factors, the Board concluded that confusion was not likely because “the dissimilarity of the marks is the most important and pivotal factor, outweighing the other DuPont factors.”

The Case is Cancellation No. 92066927.

Judge: Goodman, C.

Attorneys: Jon O. Nelson (Banner & Witcoff Ltd.) for Keystone Consolidated Industries, Inc. Cecilia R. Dickson (Webb Law Firm, P.C.) for The Franklin Investment Corp. d/b/a Franklin Industries.

Companies: Keystone Consolidated Industries, Inc.; The Franklin Investment Corp. d/b/a Franklin Industries

Cases: Trademark USPTO