USPTO TTABVU E. Traderrark Trial and Appeal Board lnq uiry S)stem
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`TTABVUE. Trademark Trial and Appeal Board Inquiry System
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`V1.9
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`Exparte Appeal
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`Number: 86152117
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`Filing Date: 05/20/2015
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`Status Date: 05/20/2015
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`Plaintiff
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`Status: Pending
`General Contact Number: 571-272-8500
`1
`v /pkg 5
`Paralegal Name: LALITA GREENE
`(° 4% g/LOAL 5
`Name: Forney Industries Inc.
`77% r I/LL "'
`Correspondence: William W. Cochran
`"‘\:l/
`6//4 Kw
`Cochran Freund & Young LLC
`g‘ ed VL0
`2026 Caribou Drivesuite 201
`‘I
`UNITED STATES
`bi||c@patentlegal.com, christiec@patent|ega|.com
`flvtb
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`Fort Collins, CO 80525-4327
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`Phone: (970) 492-1100
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`,4«/’L/$¢"4/
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`Application File
`Serial #: 86152117
`Application Status: Ex Parte Appeal Pending
`Prosecution History
`#
`Date
`3
`05/20/2015
`;
`05/20/2015
`1
`Resultsasof06/23/201510103AM
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`Assignment
`£1? ‘flail
`History Text
`I
`INSTITUTED
`fi‘7//
`APPEAL ACKNOWLEDGED
`43L
`(/7: 8
`Search: i %,0Ed-
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`APPEAL TO BOARD
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`05/20/2015
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`I
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`| HOME I INDEX] SEARCH I eBUSlNESS | CONTACTUS | PRIVACY POLICY
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`http://ttabvue.uspto.g ov/ttabvuel\/?q t= adv&procstatus=All &pno=&propno= 861 521 17&q s= &propnameop= &propname= &pop= &pn= &pop2= &pn2= &cop= &cn=
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`

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`Trademark Trial and Appeal Board Electronic Filing System. httgs//estta.usQto.gov
`ESTTA Tracking number:
`ESTTA673428
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`Filing datei
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`05/20/201 5
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`
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`Application Serial
`No.
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`861521 17
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`Fomey Industries Inc.
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`Notice of Appeal
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`Notice is hereby given that Fomey Industries Inc. appeals to the Trademark Trial and Appeal Board the refus-
`al to register the mark depicted in Application Serial No. 86152117.
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`The refusal to register has been appealed as to the following classes of goods/services:
`' Class 006. First Use: 2011/03/00 First Use In Commerce: 2011/03/00
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`All goods and sewices in the class are appealed, namely: Metal hardware springs, metal chains, steel
`chains, metal rods for brazing and welding, silver solder, lead free solderwire used in metal working, metal
`welding cable, welding wire
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`' Class 007. First Use: 2007/10/00 First Use In Commerce: 2007/10/00
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`All goods and services in the class are appealed, namely: Welding torches, power-operated grinding
`wheels, abrasive wheels for power-operated grinders, wire brushes for use in machines, gas-operated
`welding machines, sanding discs for metal working, weldingkits comprising torches and gauges; parts for
`compressed-air tools, namely, couplings valves, switches, compressors, clamping tools and injectors, cut-
`ting attachments, nozzles, torch handles and goggles, precision machine tools, namely, hard metal tools,
`poly crystalline diamond(PCD) tools, and diamond-coated and diamond-uncoated tools, and hard metal
`tools, all for use in the cutting and forming of materials by others; wire brushes for use in machines
`
`' Class 008. First Use: 2011/03/00 First Use In Commerce: 2011/03/00
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`All goods and services in the class are appealed, namely: Hacksaw blades, files
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`' Class 009. First Use: 2011/07/00 First Use In Commerce: 2011/07/00
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`All goods and services in the class are appealed, namely: Welding helmets, welding masks, weldinglens
`for use in helmets and shields, respirators other than for artificial respiration, dust masks, battery terminal
`connector clamps, jumper cables, protective ear coverings, safety eyewear, magnetsfor industrial pur-
`poses
`
`' Class 011. First Use: 2012/02/00 First Use In Commerce: 2012/02/00
`All goods and services in the class are appealed, namely: Propane torch for clearing vegetation and pro-
`pane torch for heating roofing materials, propane torch for melting ice and flashlights
`
`' Class 016. First Use: 2008/08/00 First Use In Commerce: 2008/08/00
`All goods and services in the class are appealed, namely: Paint markers for highlighting and marking
`metals, window markers, Industrial marking products, namely, soapstone
`
`' Class 017. First Use: 2011/03/00 First Use In Commerce: 2011/03/00
`All goods and services in the class are appealed, namely: Plastic tape for use in auto safety
`Respectfully submitted,
`/William W. Cochranl
`05/20/2015
`William W. Cochran
`
`Attorney of record
`
`Cochran Freund & Young LLC
`2026 Caribou Drivesuite 201
`
`Fort Collins, CO 80525-4327
`UNITED STATES
`
`billc@patentlegal.com, christiec@patentlegal.com
`
`(970) 492-1100
`
`

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`H
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`‘I
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Trademark Trial and Appeal Board
`P.O. Box 1451
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`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`MAILED: May 20,2015
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`IN RE:
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`Forney Industries Inc.
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`BRIEF DUE: 7/19/2015
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`SERIAL NO. 86152117
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`APPEAL RECEIVED: 05/20/2015
`
`William W. Cochran
`
`Cochran Freund & Young LLC
`2026 Caribou DriveSuite 201
`
`Fort Collins CO 80525-4327
`
`ESTTA673428
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`The appeal and appeal fee in the above-entitled application were received on the
`date indicated above.
`
`The Trademark Rules of Practice provide that the brief of the applicant must be
`filed within sixty days after the date of the appeal. Applicant must also indicate,
`not later than ten days after the due date for applicant's reply brief, if an oral
`hearing is desired.
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`If applicant has pending, or has filed with its notice of appeal, a request for
`reconsideration, an amendment, an amendment to allege use, a request to divide, or
`a petition in connection with its application, applicant should contact the Board at
`571-272-8500 and speak to the paralegal to whom this appeal has been assigned.
`
`

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`ll
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`‘I
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`I
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`Randy Nieders
`
`From:
`Sent:
`To:
`
`Subject:
`Attachments:
`
`Randy Nieders <rjnieders@att.net>
`Sunday, June 14, 2015 2:27 PM
`Emi|y.car|sen@uspto.gov
`
`FW: Registration # 86152117 and 86269096
`DACO Decision.pdf
`
`Sorry, too much data, I removed the files all but the Dismissal,
`
`From: Randy Nieders [mailto:rinieders@att.net]
`Sent: Sunday, June 14, 2015 1:47 PM
`To: 'Emily.car|sen@uspto.gov‘
`Subject: Registration # 86152117 and 86269096
`
`Emily K. Carlsen
`Trademark Attorney
`Law Office 103
`
`Emily, I am sending this to make you aware of a change of events regarding the Forney Claims and Registrations above.
`The reason I am writing this is that they Sued me and my Company, DACO of Missouri, DBA as KDAR Company for color
`infringement in regards to their color trademark. You have ruled several times on their requests and since the owner,
`Steve Anderson, CEO President of Forney Industries specifically named my company in their responses I am obligated to
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`inform you of the outcome of that law suit.
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`For reference to his signed declaration that names my company, I have attached both of your responses and their
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`responses referring to the law suit.
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`Case 86152117, you sent the Office out refusal on 4/14/14
`They responded on 10/14/14 with the declaration from Steven Anderson, CEO and President that refers to my Company
`and the law suit in section 8 and 13 of his declaration
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`You sent a Final Refusal on 11/19/2014 and the filed an Appeal on May 20, 2014, that looks like it was late by one day.
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`Case 86269096, you sent the Office out refusal on 9/16/2014 that was filed for the same color trademark as above
`They responded on 3/17/2015 with the declaration from Steven Anderson, CEO and President that refers to my
`Company and the law suit in section 8 and 13 of his declaration
`You sent final refusal on this case 5/ 14,2015
`
`On May 29,2015, the United States District Court for the District of Colorado, Case 14—cv—01236-CMA—MEH, Filed a
`complete Dismissal under Summary Judgement, dismissing the case with Prejudice in favor of the defendant DACO of
`Missouir, Inc
`Please see attached decision.
`
`No need to respond, but I wanted you to know about the court decision in reference to Steven Anderson, CEO and
`President of Forney in his declaration referring to the suit.
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`Respectively submitted,
`
`Randal Nieders
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`

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`H
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`‘l
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`- President
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`DACO of Missouri, Inc
`314-406-2764
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`

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`ll
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`Case 1:14-cv-01326-CMA-MEH Document 51 Filed 05/29/15 USDC Colorado Page 1 of 15
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF COLORADO
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`Judge Christine M. Arguello
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`Civil Action No. 14—cv—01326-CMA-MEH
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`FORNEY INDUSTRIES, INC., a Colorado corporation,
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`Plaintiff,
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`v.
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`DACO OF MISSOURI, INC., a Missouri corporation, dlbla KDAR COMPANY,
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`Defendant.
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`
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`ORDER GRANTING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT AND
`DENYING PLA|NT|FF’S CROSS-MOTION FOR PARTIAL SUMMARY JUDGMENT
`
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`In this trademark infringement and unfair competition case, Forney Industries,
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`Inc. (“Forney”) alleges that KDAR Company’s use of a particular color combination in
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`the packaging of its metalworking products violates the Lanham Act and Colorado
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`common law. However, because Forney cannot establish that its alleged mark has
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`attained “secondary meaning” as a matter of law, Defendant's Motion for Summary
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`Judgment (Doc. # 38) is granted.
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`I. BACKGROUND
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`Forney, a distributor of metalworking and welding products, brought this
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`Complaint against Daco of Missouri, Inc., dlbla KDAR Company (“KDAR"), in October of
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`2013, alleging that KDAR “intentionally used a color combination and arrangement
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`Case 1:14—cv—01326—CMA-MEH Document 51 Filed 05/29/15 USDC Colorado Page 2 of 15
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`substantially similar to the Forney Color Mark on the packaging of its Metalworking
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`Products that compete directly with Forney Metalworking Products,” and that the use of
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`this mark “is likely to cause consumer confusion as to the source or origin of the KDAR
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`Metalworking products.” (Doc. # 1, 111] 20, 22.) Specifically, Forney alleges that its use
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`of “a red, then yellow, then black banner with white letters color combination and
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`arrangement” constitutes a distinctive “Color Mark.“ (Id., 1H] 9, 10, 13; see also Doc. ##
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`2-1, 2-2, 2-3.)
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`On December 24, 2013, Forney submitted an application to the United States
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`Patent and Trademark Office (“USPTO”), to obtain a trademark registration for the
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`colors red and yellow on the packaging of its metalworking and welding products
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`(“Trademark Application 1").
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`(Doc. # 38-1.) in Trademark Application 1, Forney
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`attested that its earliest use of these colors on its product packaging was March 2011
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`for metalworking products and June 2012 for welding products.
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`(Id. at 2.) On April 14,
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`2014, the USPTO refused Forney’s Trademark Application 1, explaining that the
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`applied-for color mark was not inherently distinctive, competitors already used similar
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`colors on their packaging, and the colors had not acquired distinctiveness; the USPTO
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`requested Forney’s response to the refusal.
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`(Doc. # 38-2.) On May 1, 2014, Forney
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`submitted a second application to the USPTO to obtain a trademark registration for the
`colors red, yellow, and black on the packaging of its metalworking and welding products
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`(“Trademark Application 2”).
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`(Doc. # 38-3.) In its Trademark Application 2, Forney
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`again attested that its earliest use of these colors on its product packaging was March
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`1 The Court will use this term as a shorthand way of describing the particular selection and
`arrangement of colors on Forney’s packaging.
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`Case 1:14—cv-01326—CMA—MEH Document 51 Filed 05/29/15 USDC Colorado Page 3 of 15
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`2011 for metalworking products and June 2012 for welding products.
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`(Id. at 2.) On
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`September 16, 2014, the USPTO denied Forney’s Trademark Application 2 for the
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`same reasons it had denied Trademark Application 1; the USPTO requested Forney's
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`response to the refusal. (Doc. # 38-4.)
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`On November 19, 2014, the USPTO issued its final decision on Trademark
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`Application 1 and refused registration because the applied-for color mark was not
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`inherently distinctive, competitors already used similar colors on their packaging, and
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`the colors had not acquired distinctiveness.
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`(Doc. # 38-5.) The USPTO further found
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`that, because Forney’s “mark” was only a combination of colors and nothing more,
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`neither “trade dress" nor protection for a particular package design was at issue.
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`(Id. at
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`2.)
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`In deposition testimony, Forney CEO Steve Anderson admitted that Forney’s
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`packaging colors have not remained uniform over time.
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`(Doc. # 38-22 at 239:12—21)
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`(“Q: In fact, .
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`.
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`. haven't you applied to have the U.S. Patent and Trademark Office
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`recognize your color mark as a trademark on three separate occasions?” “A: I think that
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`the color mark has changed over those times, over those periods.”) KDAR also
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`submitted undisputed evidence that the use of the colors red, yellow, black and white for
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`the packaging of metalworking products is not unique or exclusive; specifically, it
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`submitted photos showing that ten different companies use red, yellow, black and/or
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`white in their packaging of metal grinding wheels, and six different companies use these
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`colors in their packaging of welding wire products. (Docs. ## 38-25, 38-26.)
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`Case 1:14-cv—01326—CMA-MEH Document 51 Filed 05/29/15 USDC Colorado Page 4 of 15
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`KDAR filed the instant Motion for Summary Judgment, arguing that Plaintiff
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`cannot prevail on its unfair competition claims against KDAR as a matter of law.
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`(Doc. #
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`38.)
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`ll. STANDARD OF REVIEW
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`Summary judgment is warranted when "the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a
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`matter of law.” Fed. R. Civ. P. 56(a). A fact is “material” if it is essential to the proper
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`disposition of the claim under the relevant substantive law. Wright v. Abbott Labs., Inc.,
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`259 F.3d 1226, 1231-32 (10th Cir. 2001). A dispute is "genuine” if the evidence is such
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`that it might lead a reasonable jury to return a verdict for the nonmoving party. Allen v.
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`Muskogee, OkI., 119 F.3d 837, 839 (10th Cir. 1997). When reviewing motions for
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`summary judgment, the Court views the evidence in the light most favorable to the non-
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`moving party. See id. However, conclusory statements based merely on conjecture,
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`speculation, or subjective belief do not constitute competent summary judgment
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`evidence. Bones v. Honeywell Int’l, Inc., 366 F.3d 869, 875 (10th Cir. 2004).
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`The moving party bears the initial burden of demonstrating an absence of a
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`genuine dispute of material fact and entitlement to judgment as a matter of law.
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`Id.
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`In
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`attempting to meet this standard, a movant who does not bear the ultimate burden of
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`persuasion at trial does not need to disprove the other party’s claim; rather, the movant
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`need simply point the Court to a lack of evidence for the other party on an essential
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`element of that party’s claim. Adler v. Wal—Mart Stores, Inc., 144 F.3d 664, 671 (10th
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`Cir. 1998) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986)).
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`Case 1:14-cv-01326—CMA—MEH Document 51 Filed 05/29/15 USDC Colorado Page 5 of 15
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`Once the movant has met its initial burden, the burden then shifts to the
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`nonmoving party to “set forth specific facts showing that there is a genuine issue for
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`trial.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986). The nonmoving party
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`may not simply rest upon its pleadings to satisfy its burden.
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`Id. Rather, the nonmoving
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`party must “set forth specific facts that would be admissible in evidence in the event of
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`trial from which a rational trier of fact could find for the nonmovant.” Adler, 144 F.3d at
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`671. “To accomplish this, the facts must be identified by reference to affidavits,
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`deposition transcripts, or specific exhibits incorporated therein.” Id.
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`Ill. ANALYSIS
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`The Lanham Act makes actionable the “deceptive and misleading use" of
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`trademarks and protects “persons engaged in .
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`.
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`. commerce against unfair
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`competition.” 15 U.S.C. § 1127. Section 32 of the Lanham Act protects registered
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`trademarks, whereas Section 43(a) of the Act “prohibits a broader range of practices
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`than does § 32.” lnwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 858 (1982).
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`Section 43(a) protects qualifying unregistered trademarks, and gives a seller or
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`producer a cause of action against any person whose use of a word, symbol or device
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`is likely to cause confusion regarding the source or origin of the plaintiffs goods. 15
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`U.S.C. § 1125(a)(1)(A). Although courts — including the United States Supreme Court —
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`were initially skeptical about whether colors could qualify for Lanham Act protection, that
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`issue has been definitively resolved. See, e.g., Qualitex Co. v. Jacobson Prods. Co.,
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`514 U.S. 159, 174 (1995) (holding that green-gold color of manufacturer's press pad
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`could qualify for trademark protection); Christian Louboutin S.A. v. Yves Saint Laurent
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`Case 1:14-cv—01326-CMA-MEH Document 51 Filed 05/29/15 USDC Colorado Page 6 of 15
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`Amer. Holdings, lnc., 696 F.3d 206, 225 (2d Cir. 2012) (same, with regard to the bright
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`red, lacquered outsoles of Louboutin high heels); Bd. of Supervisors for La. State Univ.
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`Agric. and Mech. College v. Smack Apparel Co., 550 F.3d 465, 475 (5th Cir. 2008)
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`(same, with regard to universities’ color schemes and other identifying indicia).
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`In
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`Qualitex, the Supreme Court explained that colors may qualify for the Act's protection
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`because
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`over time, customers may come to treat a particular color on a product or
`its packaging (say, a color that in context seems unusual, such as pink on
`a firm’s insulating material or red on the head of a large industrial bolt) as
`signifying a brand. And, if so, that color would have come to identify and
`distinguish the goods — i.e., “to indicate” their “source” .
`.
`.
`.
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`514 U.S. at 163.
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`However, “[b]y their nature, color marks carry a difficult burden in demonstrating
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`distinctiveness and trademark character." In re Owens-Coming Fiberglas Corp., 774
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`F.2d 1116, 1127 (Fed. Cir. 1985). Specifically, the use of particular colors qualifies for
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`protection only upon a showing of so-called “secondary,” or acquired, meaning. Wal-
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`Man‘ Stores, Inc. v. Samara Bros., 529 U.S. 205, 211 (2000). “Secondary meaning”
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`refers to the level of distinctiveness that a descriptive mark must attain in the minds of
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`consumers before it is eligible for trademark protection. Water Pik, Inc. v. Med-Sys.,
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`/nc., 726 F.3d 1136, 1154 (10th Cir. 2013). “Secondary meaning” occurs when, “in the
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`minds of the public, the primary significance of a [mark] is to identify the source of the
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`product rather than the product itself.” Wal Man‘ Stores, Inc., 529 U.S. at 211 (quoting
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`lnwood Labs., Inc., 456 U.S. at 851, n. 11); see also 2 McCarthy on Trademarks and
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`Unfair Competition § 15:5 (4th ed.) (“The prime element of secondary meaning is a
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`Case 1:14-cv-01326-CMA-MEH Document 51 Filed 05/29/15 USDC Colorado Page 7 of 15
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`mental association in buyers’ minds between the alleged mark and a single source of
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`the product.") A mark “either has secondary meaning or it does not.” Water Pik, lnc.,
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`726 F.3d at 1154. Whether or not a trademark has acquired secondary meaning is
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`generally a question of fact; however, where the underlying facts are undisputed, as in
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`this case, the question of secondary meaning is appropriate for resolution on motion for
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`summaryjudgment. See Marker Int’! v. DeBruler, 844 F.2d 763, 764 (10th Cir. 1988).
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`A plaintiff may establish secondary meaning “through the use of direct evidence,
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`such as consumer surveys or testimony from consumers.” Donchez v. Coors Brewing
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`Co., 392 F.3d 1211, 1218 (10th Cir. 2004) (citation omitted). A plaintiff may also rely
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`upon “circumstantial evidence regarding: (1) the length and manner of [the mark’s] use,
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`(2) the nature and extent of advertising and promotion of the mark and (3) the efforts
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`made in the direction of promoting a conscious connection, in the public’s mind,
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`between the name or mark and a particular product or venture.” Id. (citations and
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`internal quotation marks omitted)?
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`In the instant case, Forney submits no direct evidence, such as surveys, to
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`indicate that consumers associate its Color Mark with Forney; instead, it relies
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`exclusively on circumstantial evidence that its Color Mark has achieved secondary
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`meaning. Citing no legal authority, the sole evidence Forney provides in support of its
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`assertion that its Color Mark has achieved secondary meaning is as follows:
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`2 Additionally, a court may consider evidence of intentional copying when assessing whether a
`product has achieved secondary meaning. Sally Beauty Co. v. Beautyco, Inc., 304 F .3d 964,
`978 (10th Cir. 2002). However, because Forney does not rely on such evidence, the Court
`does not discuss this factor.
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`Case 1:14-cv-01326-CMA-MEH Document 51 Filed 05/29/15 USDC Colorado Page 8 of 15
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`o
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`“Forney adopted the Color Mark in 1990 to distinguish its retail metalworking
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`products form [sic] those of its competitors. [Anderson Decl.] [‘|[1[ 6, 7, 8, 18, 19,
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`20, 21, 22, and 23.] None of Forney’s traditional competitors used the color
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`combination or the arrangement when Forney adopted the mark and have not
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`used it over the past 25 years.” (Doc. # 43 at 10.)
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`0
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`“Over the past 25 years Forney has advertised it [sic] metalworking products
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`bearing the Color Mark in displays at over 10,000 retail stores in every state and
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`every city in the United States. [Anderson Decl.] at [‘[[1|] 6, 7, 8, 18, 19, 20, 21,
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`22, and 23.” (Id. at 11.)
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`o
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`“The color marks [sic] unique combination of the red into yellow background with
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`the black banner and white letters stands out as the main feature of the products
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`and displays. [Anderson Decl.] at [1[‘[|] at 19, 22-23.” (Id.)
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`o
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`“Forney has sold over $500,000,000 worth of these mostly low cost consumer
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`goods bearing the Forney Color Mark over the past twenty years. [Anderson
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`Dec|.]at[1|]19.” (Id.)
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`KDAR argues that this limited evidence is insufficient to prove that its Color Mark has
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`attained secondary meaning. As discussed below, the Court agrees.
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`As for evidence pertaining to the advertising and promotion of the Color Mark,
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`“‘[t]he critical question in considering the evidence is not the extent of the promotional
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`efforts but their effectiveness in creating an association’ between the trade dress and
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`plaintiff.” Winning Ways, Inc. v. Holloway Sportswear, lnc., 913 F. Supp. 1454, 1470 (D.
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`Kan. 1996); see also Art Attacks Ink, LLC v. MGA Entertainment lnc., 581 F.3d 1138,
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`Case 1:14-cv—01326-CMA—MEH Document 51 Filed 05/29/15 USDC Colorado Page 9 of 15
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`1146 (9th Cir. 2009) (“To demonstrate secondary meaning based on advertising, the
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`advertising must be of a ‘nature and extent to create an association’ with the
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`advertiser's goods.”); Yankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 259
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`F.3d 25, 44 (1st Cir. 2001) (affirming the district court’s finding that the “advertising did
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`not emphasize any particular element of its trade dress, and thus could not be probative
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`of secondary meaning”).
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`Forney states that “[o]ver the past 25 years Forney has advertised it [sic]
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`metalworking products bearing the Color Mark in displays at over 10,000 retail stores in
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`every state and every city in the United States.” (Doc. # 43 at 11.) However, that
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`consumers were exposed to advertising, even at thousands of retail stores, is not
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`probative of whether consumer sales were stimulated by the Color Mark, nor that
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`consumers associated the Color Mark with Forney in particular. See Water Pik, 726
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`F.3d at 1154-55 (concluding that, as to secondary meaning, “[e]vidence that [plaintiff's]
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`products had millions of users and that its products were sold through well-known
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`retailers does not tell us whether the sales were stimulated by the mark. That its
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`products were shown on the Oprah Winfrey Show on at least one occasion is not
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`enough to establish that consumers thereafter connected the mark and the product.”);
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`see also 1 McCarthy on Trademarks § 8:8 (“[S]econdary meaning cannot usually be
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`proven by advertising that merely pictures the claimed trade dress and does nothing to
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`emphasize it or call attention to it.”) (footnotes omitted).
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`In re Owens—Coming, 774 F.2d at 1126-27, provides a helpful point of
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`distinction.
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`In that case, the Federal Circuit Court of Appeals held that a manufacturer
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`of residential insulation had shown secondary meaning as to the color pink, because the
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`company spent $42 million in advertising its product with slogans that directly
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`highlighted the “pinkness” of the product and thus promoted an association in the
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`consumer’s mind between the pink color and the source of the product.
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`Id. These
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`slogans included “Pink of Perfection”; “The Pink Cooler”; “Big Pink”; “Love that Pink”;
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`“Pink Power”; “America's Favorite Pink Product”; “Tickled Pink”; “Put your House in the
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`Pink”; “Up with Pink”; “Prime Time Pink”; “Think Pink”; “Think More Pink”; “Beat the Cold
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`with Pink”; ‘‘All that Pink”; and “Plant Some Pink Insulation in your Attic.” Id.
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`In that
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`case, the plaintiff also introduced its product to its dealers with the explanation that it
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`was “colored pink so your customers will recognize it as the latest and the best!” Id. at
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`1127.
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`In contrast, Forney’s advertising utterly fails to mention the Color Mark, or to
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`emphasize it in any fashion, so as to promote an association between Forney’s product
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`and its source. See (Doc. # 43-1 at 1] 23) (emphasis in original) (showing advertisement
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`display without any reference to the Color Mark, and noting that “[t]he image below is of
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`a typical Forney Retail Metalworking display.
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`It shows what consumers see when
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`visiting one of the 10,000 retail outlets serviced by Forney.”) Indeed, the only evidence
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`Forney offers in support of the fact it has promoted an association in consumer’s minds
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`is its conclusory assertion that “the color marks [sic] unique combination of the red into
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`yellow background with the black banner and white letters stands out as the main
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`feature of the products and displays." (Doc. # 43 at 11) (emphasis added).
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`It cites
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`Forney’s CEO’s Declaration in support of this proposition.
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`(Id.) However, Forney’s own
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`evaluation of the “main feature” of its products and displays is simply not competent
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`evidence to demonstrate that consumers also believed that the Color Mark was the
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`“main feature” of the packaging, much less that its Color Mark achieved secondary
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`meaning. See Honeywell lnt’l, Inc., 366 F.3d at 875 (noting that conclusory statements
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`based merely on conjecture, speculation, or subjective belief do not constitute
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`competent summary judgment evidence); Hall v. Bellmon, 935 F.2d 1106, 1111 (1 0th
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`Cir. 1991) (citing Fed. R. Civ. P. 56(e)) (“the nonmovant’s affidavits must be based upon
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`personal knowledge and set forth facts that would be admissible in evidence;
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`conclusory and self—serving affidavits are not sufficientf’); Urban Grp. Exercise
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`Consultants, Ltd. v. Dick’s Sporting Goods, lnc., No. 12 ClV. 3599 RWS, 2012 WL
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`3240442, at *7 (S.D.N.Y. Aug. 7, 2012) (“Although the Amended Complaint does allege
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`that Plaintiff’s trade dress case has become associated with the Urban Rebounder in
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`the eyes of the public, there are no facts alleged to support this conclusory c|aim.”)
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`Although Forney points to its long—time use of its Color Mark, “[t]o acquire
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`secondary meaning, a descriptive mark must have been used so long and so
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`exclusively by one producer with reference to his goods” that it has acquired
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`distinctiveness. Sally Beauty Co. v. Beautyco, lnc., 304 F.3d 964, 978 n.4 (10th Cir.
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`2002) (citing J. M. Huber Corp. v. Lowery Wellheads, lnc., 778 F.2d 1467, 1470 (10th
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`Cir. 1985)). As such, it is significant that the USPTO concluded that many competitors
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`use similar colors to those in the Color Mark, and also that Defendant has submitted
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`undisputed evidence indicating that many other companies employ similar colors in their
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`packaging of similar products. See (Docs. ## 38-1 to -5; 38-25; 38-26). That Forney’s
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`Color Mark has not been uniform over time, and that use of the colors in its Color Mark
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`is not unique, means that consumers will not, by definition, associate the Color Mark
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`with Forney.3 See Forschner Group, Inc. v. Arrow Trading Co., lnc., 124 F.3d 402, 408
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`(2d Cir. 1997) (holding that use of the color red on multifunctional pocket knives by
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`three competing companies meant that color red did not primarily designate the plaintiff
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`as the single source of the product); Mana Products, Inc. v. Columbia Cosmetics
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`Manufacturing, Inc., 65 F.3d 1063, 1071 (2d Cir. 1995) (holding that the color black did
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`not identify the plaintiff as the source of the cosmetics because “countless numbers of
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`cosmetics companies .
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`.
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`. sell black compacts.”).
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`Forney also points to the fact that it “has sold over $500,000,000 worth of these
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`mostly low cost consumer goods bearing the Forney Color Mark over the past twenty
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`years.” (ld.) However, evidence pertaining to raw sales figures, standing alone, is not
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`indicative of secondary meaning, because sales volume may be related, instead, “to
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`factors other than source identification." Sally Beauty Co. v. Beautyco, lnc., 304 F.3d
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`964, 978 (10th Cir. 2002); see also Water Pik, lnc., 726 F.3d at 1154-55 (“[e]vidence
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`that [plaintiff’s] products had millions of users and that its products were sold through
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`well-known retailers does not
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`tell us whether the sales were stimulated by the mark”);
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`J. M. Huber Corp., 778 F.2d at 1470 (holding that a party failed to establish secondary
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`meaning despite introducing evidence establishing that it had used a mark for as long
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`3 Forney asserts that “none of Forney’s traditional competitors used the color combination or the
`arrangement when Forney adopted the mark and have not used it over the past 25 years."
`(Doc. # 43 at 10.) Although Forney does not define “traditional competitors,” this argument is
`contradicted by undisputed evidence in the record, as to many other companies who are
`employing similar color combinations for competitive products. (See Docs. ## 38-25, 38-26.)
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`as thirty—four years, had sold $45 million in product, spent approximately $500,000 in
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`advertising, and distributed 12,000 catalogs annually to end users and supply stores).4
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`In sum, after more than two years of litigation, Forney offers little more than
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`speculation and conjecture to support the proposition that the Color Mark has acquired
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`secondary meaning.
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`It offers no direct evidence of secondary meaning, such as
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`consumer surveys, and its circumstantial evidence, as detailed above, amounts to
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`general descriptions of its advertising efforts (which make no mention of its Color Mark)
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`and its conclusory assurances that consumers see its Color Mark as distinctive and that
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`consumers mentally connect the Color Mark with Forney. Viewing the record in the light
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`most favorable to Forney, a reasonable jury could not infer secondary meaning from
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`these facts.
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`Indeed, federal decisions have rejected claims of secondary meaning by
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`plaintiffs who provided considerably more circumstantial evidence than Forney presents
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`here. See, e.g., Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 826—27 (Fed. Cir.
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`1992) (reversing jury verdict); Mana Products, Inc. v. Columbia Cosmetics Mfg., Inc., 65
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`F.3d 1063, 1071 (2d Cir. 1995) (affirming summaryjudgment); Echo Travel, Inc. v.
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`Travel Associates, Inc., 870 F.2d 1264 (7th Cir. 1989) (affirming summaryjudgment);
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`Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863 (8th Cir. 1994) (reversing district court
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`findings); AI—Site Corp. v. VSI Intern., Inc., 174 F.3d 1308, 1327 (Fed. Cir. 1999)
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`(reversing jury verdict); Investacorp, Inc. v. Arabian Investment Banking Corp.
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`4 Although not dispositive, the Court also notes that the USPTO has concluded, on multiple
`occasions, that Forney’s Color Mark was not distinctive. Although Forney argues that evidence
`of the USPTO’s conclusions is “not relevant” (Doc. # 43 at 4), "[t]he general principles qualifying
`a mark for registration under § 2 of the Lanham Act are for the most part applicable in
`determining whether an unregistered mark is entitled to protection under § 43(a).” Two Pesos,
`Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992).
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`(Investcorp) E.C., 931 F.2d 1519 (11th Cir. 1991) (affirming summaryjudgment).
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`Because Forney has failed to establish that its Color Mark has achieved secondary
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`meaning, it cannot state a claim for trade dress infringement or unfair competition
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`against KDAR under 15 U.S.C. § 1125(a).
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`With respect to Plaintiffs common—law trademar