Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA689203
`ESTTA Tracking number:
`08/12/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91222215
`Plaintiff
`Lumite, Inc.
`Lauren W. Brenner
`Gardner Groff Greenwald & Villanueva, PC
`2018 Powers Ferry Road, Suite 800
`Atlanta, GA 30339
`UNITED STATES
`trademark@gardnergroff.com
`Other Motions/Papers
`Lauren W. Brenner
`trademark@gardnergroff.com
`/Lauren W. Brenner/
`08/12/2015
`06_Opposer's Motion for Judgment on the Pleadings.pdf(1533572 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
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` ) Opposition No. 91222215
` ) Application Serial No. 86/057,945
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`Filing Date: September 6, 2013
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`Publication Date: February 3, 2015
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` Mark:
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`LUMITE, INC.,
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`Opposer,
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`v.
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`NICOLON CORPORATION,
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`Applicant.
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`OPPOSER LUMITE’S MOTION FOR JUDGMENT ON THE PLEADINGS AND
`MEMORANDUM IN SUPPORT
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`LUMITE, INC. (“Opposer”), through its undersigned attorneys, and pursuant to Rule
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`12(c) of the Federal Rules of Civil Procedure, Trademark Rule of Procedure 2.127(d) and TBMP
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`§ 504, moves for Judgment on the Pleadings against Nicolon Corporation (“Applicant”) on the
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`following grounds:
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`INTRODUCTION
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`This is a relatively simple case involving the Applicant’s attempt to register the entire
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`spectrum of the color orange for use on geosynthetics and geotextiles on the goods listed. The
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`color orange, such as “safety orange,” has long been used in the fields of construction,
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`environmental, and historical sites as a visual warning barrier. But, Applicant asserts that it is
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`entitled to exclusive use of the color despite the history and functionality of orange. As shown
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`below, Opposer should be awarded Judgment on the Pleadings as the Applicant has failed to
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`show its use of the color is anything other than functional, and in fact has admitted as much.
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`1
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`FACTUAL BACKGROUND
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`Applicant filed its Section 1(a) Application to register the COLOR ORANGE Mark,
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`Serial No. 86057945, in connection with “[g]eosynthetics, namely, geotextiles for the purpose of
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`drainage, stabilizing inclines, recultivation, plant support, absorption, filtration, separation,
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`stabilization and reinforcement of the soil; geotextiles for use in connection with road
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`construction, tunnel construction, waterway construction and public works construction; fabrics
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`for use in civil engineering; erosion control fabric,” in Class 19, with a date of first use of May
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`20, 2010 (“the Application”).
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`Lumite, Inc. filed its notice of opposition against the Application on the grounds of Non-
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`Distinctiveness and functionality under 15 U.S.C. § 1052(e). Opposer is entitled to judgment on
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`the pleadings because: (1) Applicant is attempting to register the entire spectrum of the color
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`orange for all geosynthetics and geotextiles, both above and below ground despite admitting that
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`at least some of these usages are functional; (2) Applicant’s admission from its Answer that the
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`color orange is functional on the listed goods (e.g., the goods are “highly visible” because of the
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`orange color, orange geotextile safety fencing is used on construction sites, orange is used on
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`traffic cones and hunting vests, and the color orange contrasts visibly with dark soils); (3) the
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`inherit functionality of the color orange in the construction field; and (4) Supreme Court
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`precedent on functionality.
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`Applicant has failed to satisfy its burden of showing that its use of the color orange on
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`geosynthetics and geotextiles has acquired distinctiveness as a source identifier and cannot
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`truthfully contest that the alleged mark is functional.
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`2
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`1. Applicant’s goods are not limited in the manner Applicant falsely asserts nor is the
`Application limited to specific shade of orange.
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`Despite Applicant’s assertion otherwise, Applicant’s goods recited in the Application are
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`not limited to above or below ground use. Instead, the application lists “[g]eosynthetics, namely,
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`geotextiles for the purpose of drainage, stabilizing inclines, recultivation, plant support,
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`absorption, filtration, separation, stabilization and reinforcement of the soil; geotextiles for use in
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`connection with road construction, tunnel construction, waterway construction and public works
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`construction; fabrics for use in civil engineering; erosion control fabric,” in Class 19. Applicant’s
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`description of the mark is “The color(s) orange is/are claimed as a feature of the mark. The mark
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`consists of the color orange as applied to one or more yarns or threads woven into the body of
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`geosynthetic or geotextile fabric of indefinite length and width producing a radiant orange
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`surface when light strikes the fabric and the matter shown in broken lines is not part of the mark
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`and serves only to show the position or placement of the mark.” Applicant’s attempt at
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`distinguishing between above and below ground use is belied by its actual identification of
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`goods. The Application encompasses both above and below ground use.
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`While the United States Patent and Trademark Office does not formally require an
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`applicant to limit its trademark application to a specific color or pantone number, precedent
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`generally requires it. (See UPS’s Registration #2,901,090 for “chocolate brown…approximate
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`equivalent of Pantone Matching System 462C;” T-Mobile’s Registration #3,263,625 for
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`“magenta along, which is the approximate equivalent of Pantone Matching System, Rhodamine
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`Red U;” Tiffany’s Registrations #2,359,351, #2,416,795, and #2,416,794, for “a shade of blue
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`often referred to as robin’s-egg blue;” 3M’s Registrations #2,619,345 for “yellow shade
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`approximately equivalent to Pantone color 123C,” #2,390,667 for “canary yellow;” United States
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`Gypsum Company’s Registration #3,720,395 for “yellow green (Pantone 375);” Buffalo Wild
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`3
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`Wings, Inc.’s Registrations #2,950,567, #2,950,566 and #2,950,565 for “yellow-gold, also
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`known as Pantone 116C;” Stanley Steemer International, Inc.’s Registration #3,182,240 for
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`“yellow-orange, which is the approximate equivalent of Pantone Matching System 143C;”
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`Thrifty, Inc.’s Registration #2,608,363 for “light blue (Pantone Matching System 300) used on
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`vehicles;” Homestead, Inc.’s Registration #2,256,226 for “pantone 165C;” BP’s Registration
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`#4,525,967 for “Pantone Yellow #109, Pantone Light Green #368, and Pantone Dark Green
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`#355” on its logo; and Esurance’s Registrations #4,129,242 and #4,129,241 for “indigo blue
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`known as Pantone color #2765” on its logo).
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`In Paragraphs 40 and 41 of the Answer, Applicant admits its trademark application makes
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`claim to the entire orange spectrum. Therefore, under Applicant’s assertion, no competitor could
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`use any shade of orange on any type of geosynthetics or geotextile goods without infringing
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`Applicant’s alleged trademark. This includes geotextile safety fencing that the Applicant
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`admitted in Paragraph 7 of the Answer was used on construction sites. This also includes “safety
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`orange” which is by definition functional. The color orange as used in construction is functional.
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`2. Applicant’s admissions show functionality.
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`Applicant has made admissions in the following numbered Paragraphs of the Opposition
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`and Applicant’s Answer:
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`- Allegation 5: “The color orange is commonly used for high-visibility applications, such
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`as hunting vests and traffic cones.”
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`o Applicant’s Answer: “Applicant admits that the color orange is used for traffic
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`cones and hunting vests. Applicant is without knowledge or information sufficient
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`to form a belief or sufficient to truthfully admit or deny the remaining allegations
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`asserted in Paragraph 5, and therefore denies the allegations, leaving Opposer to
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`satisfy its burden of proof.”
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`- Allegation 7: “Commonly-observed examples of use of the color orange on construction
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`sites include orange geotextile safety fencing and orange geotextile silt fencing for
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`erosion prevention.”
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`o Applicant’s Answer: “Applicant admits that orange geotextile safety fencing is
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`used on construction sites. Applicant is without knowledge or information
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`sufficient to form a belief or sufficient to truthfully admit or deny the remaining
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`allegations asserted in Paragraph 7, and therefore denies the allegations, leaving
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`Opposer to satisfy its burden of proof.”
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`- Allegation 14: “The color orange has been used in geotextiles to create a ‘high visibility
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`signal barrier for future excavations[.]’ See Feb. 20, 2014 Office Action at 2 and webpage
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`cited
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`(http://www.sigmahellas.gr/index.php?lang=2&thecatid=4&thesubcatid=428&thesubsub
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`catid=434).”
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`o Applicant’s Answer: “To the extent Opposer is referencing the Office Action
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`issued by the United States Patent and Trademark Office (USPTO) in which all
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`the Examiner’s refusals were withdrawn and the Application passed to
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`publication, Applicant admits that the Office Action did contain the statement
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`‘high visibility signal barrier for future excavations,’ and the referenced webpage
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`in the issued Office Action. The remaining allegations of Paragraph 14 are
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`denied.”
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`5
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`- Allegation 20: “The ‘945 Application takes into account the high visibility of the color
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`orange, stating that: ‘The mark consists of the color orange as applied to one or more
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`yarns or threads woven into the body of geosynthetic or geotextile fabric … producing a
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`radiant orange surface when light strikes the fabric[.]’”
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`o Applicant’s Answer: “Applicant admits that its Application’s description of the
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`mark states as follows: The mark consists of the color orange as applied to one or
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`more yarns or threads woven into the body of a geosynthetic or geotextile fabric,
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`producing a radiant orange surface when light strikes the fabric’. The remaining
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`allegations of Paragraph 20 are denied.”
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`- Allegation 23: “The website of Ten Cate (www.tencate.com) describes Applicant’s
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`Mirafi® geotextiles as follows: ‘The use of this orange delineation fabric allows for safe
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`excavations where utilities or other sensitive structures may be buried. The highly visible
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`orange nonwoven geotextile serves as a warning to construction workers when the
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`excavation reaches a buried structure.’”
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`o Applicant’s Answer: “Applicant admits that its Mirafi® Delineation Nonwoven
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`Geotextiles are described in the cited website www.tencate.com, specifically at
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`www.tencate.com/amer/geosynthetics/products/geotextiles/TenCate-Mirafi-
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`Delineation/default.aspx, as follow: TenCate Mirafi® delineation geotextiles are
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`staple fibers used for soil separation and drainage. They combine high durability,
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`along with excellent physical and hydraulic properties. TenCate Mirafi®
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`delineation geotextiles are produced from polypropylene staple fibers and
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`combine high water flow rates and durability while providing excellent soil
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`retention. TenCate Mirafi® nonwoven geotextiles are used in a wide variety of
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`applications in the environmental and general civil markets. These include
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`separation, filtration and protection applications. TenCate Mirafi® delineation
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`geotextiles are is used in many critical subsurface systems. The delineation fabric
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`allows for safe excavations where utilities or other sensitive structures may be
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`buried. The highly visible nonwoven geotextile serves as a warning to
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`construction workers when the excavation reaches a buried structure. Applicant
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`refers to and markets the delineation geotextiles as ‘TenCate Mirafi® Delineation
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`Nonwoven Geotextiles,’ which are not the Orange Woven Fabrics that are the
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`subject of the Application.”
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`- Allegation 34: “Applicant sells woven geosynthetic fabric that is black in color (with no
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`contrasting interwoven threads).”
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`o Applicant’s Answer: “Applicant admits that it sells ‘geosynthetic fabric[s] that
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`[are] black in color (with no contrasting interwoven threads)’. The remaining
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`allegations of Paragraph 34 are denied.”
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`- Allegation 40: “Applicant’s trademark application makes claim to the entire orange
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`spectrum, as its description of the mark provides that ‘[t]he color(s) orange is/are claimed
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`as a feature of the mark.’ See the ‘945 Application.”
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`o Applicant’s Answer: “The allegations of Paragraph 40 are admitted.”
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`- Allegation 41: “Applicant fails to specify a particular pantone number or to otherwise
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`restrict its application to a particular shade of orange. As a result, Applicant’s proposed
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`mark spans the entire spectrum of the color orange.”
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`o Applicant’s Answer: “Applicant avers that specifying a particular pantone number
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`or otherwise restricting its Application to a particular shade or orange is not a
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`requirement under U.S. trademark law. The allegations of Paragraph 41 are
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`admitted.” Showing Applicant admits its trademark application makes claim to
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`the entire orange spectrum.
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`- Allegation 11: “The color orange contrasts visibly with dark soils.”
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`o Applicant’s Answer: “The allegations of Paragraph 11 are irrelevant and are
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`neither admitted nor denied.”
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`Applicant’s Answer to Allegation 11 does not admit or deny. According to Fed. R. Civ.
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`P. 8(b), and TBMP § 311.02(a), “[a]n allegation … is admitted if a responsive pleading is
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`required and the allegation is not denied.” Therefore, since Applicant did not deny this
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`allegation, its answer is legally constructed as an admission that “[t]he color orange contrasts
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`visibly with dark soils.”
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`As set forth in detail below, Applicant has admitted that its alleged orange mark is
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`functional. Thus, Opposer respectfully submits that it is entitled to an order of Judgment on the
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`Pleadings as to functionality.
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`Finally, despite Applicant’s attempt to distinguish between woven and nonwoven
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`materials, Applicant’s functional use is demonstrated through its admissions that on its
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`nonwoven products the color orange is “high[ly]-visib[le],” a “visual barrier,” a “visual
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`excavation barrier,” and a “visual dig barrier” as both products are strikingly similar.
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`3. The Board should take judicial notice of the inherent functionality of the color
`orange in construction
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`Courts may take judicial notice of documents outside of the pleadings that are capable of
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`accurate and ready determination by resort to sources whose accuracy cannot reasonably be
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`questioned. Fed. R. Evid. 201(d); Miles, Inc. v. Scripps Clinic and Research Foundation, 951
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`F.2d 361, *1 (9th Cir. 1991) (where the court took notice of four documents, including an
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`article); Oran v. Stafford, 226 F.3d 275, 289 (3rd Cir. 2000) (where the Court took notice of SEC
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`filings). A motion for judgment on the pleadings can be “supplemented by any facts of which the
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`Board may take judicial notice.” J. Moore, et al., Moore’s Federal Practice – Civil § 12.15;
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`Media Online Inc. v. El Clasificado, Inc., 88 USPQ2d 1285, *5 (TTAB 2008).
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`The Board can and should take judicial notice of inherent functionality of the color
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`orange in the construction field. This can be seen through “safety orange” (also known as “blaze
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`orange,” “vivid orange,” “OSHA orange,” “hunter orange,” and “Caltrans (California
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`Department of Transportation) orange.”) which is used to visually set objects apart from their
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`surroundings. See Olga A. Zielinska et al., A Perceptual analysis of Standard Safety,
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`Fluorescent, and Neon Colors, Proceedings of the Human Factors and Ergonomic Society annual
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`Meeting, September 2014 vol. 58 no. 1 page 1879-1883 (Exhibit A) (where fluorescent orange
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`was identified as having the highest perceived hazard rating); 15 C.F.R. § 272.3 (“blaze orange”
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`required on the tips of barrels of replica guns); and http://www.pantone.com/munsell-ansi-
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`safety-orange.
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`Paragraph 5 of Applicant’s Answer admits that “[t]he color orange is commonly used for
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`traffic cones and hunting vests,” and Paragraph 7 of the Answer admits that “orange geotextile
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`safety fencing is used on construction sites.” Furthermore, Applicant’s own website contains
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`several webpages and information sheets attesting to the visibility (functionality) of Applicant’s
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`orange nonwoven fabric, which demonstrates the orange color’s functionality in this industry.
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`These may be accessed at:
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`- http://www.tencate.com/amer/geosynthetics/products/geotextiles/TenCate-Mirafi-
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`Delineation/default.aspx;
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`- http://www.tencate.com/amer/Images/pds_NLOorange0108_tcm29-30507.pdf;
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`- http://www.tencate.com/amer/Images/N%20%26%20N%202010%20Orange%20Deli
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`neation%20Nonwovens_tcm29-32350.pdf;
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`- http://www.tencate.com/amer/Images/cs.chicago.0609_tcm29-31220.pdf; and
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`- http://www.tencate.com/amer/Images/cs.detroit0410_tcm29-31223.pdf.
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`On each of these webpages, Applicant refers to the color orange as “high-visibility,” a
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`“visual barrier,” a “visual excavation barrier,” and a “visual dig barrier.” All of these are
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`admissions of functionality. Specifically looking at the information sheet for the Mirafi®
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`Orange Delineation Nonwoven Geotextile, Applicant states the purpose of the color orange is to
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`act as a “Utility Alert” as they are “a visual dig barrier designed to be place above underground
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`utilities.” http://www.tencate.com/amer/Images/pds_NLOorange0108_tcm29-30507.pdf. Again,
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`this is an admission of functionality. Finally, looking specifically at both of the Case Studies,
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`Applicant states that the orange “visual barrier was required to provide a warning to future
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`development that these were not undisturbed soils” and “that there were contaminated soils
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`below.” http://www.tencate.com/amer/Images/cs.detroit0410_tcm29-31223.pdf (Page 2) and
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`http://www.tencate.com/amer/Images/cs.chicago.0609_tcm29-31220.pdf (Page 1) (Emphasis
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`added).
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`4. Applicant’s mark is functional.
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`The Federal Circuit has followed the Board’s established de jure functionality analysis
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`for color marks, requiring an inquiry into whether the color “should be available for use by all
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`manufacturers of these products because they need to use it to compete effectively.” Brunswick
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`Corp. v. British Seagull Ltd., 35 F.3d 1527, 1533 (Fed. Cir. 1994) (citing British Seagull Ltd v.
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`Brunswick Corp., 28 USPQ2d 1197, 1199 (1993)). A functional feature is one, the “exclusive
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`use of [which] would put competitors at a significant non-reputation-related disadvantage.”
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`Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995). Applicant is attempting
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`to register a mark that is de jure functional as there is a competitive need for the color orange in
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`the industry.
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`STANDARD OF REVIEW
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`Pursuant to Fed. R. Civ. P. 12(c), “[a]fter the pleadings are closed—but early enough not
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`to delay trial—a party may move for judgment on the pleadings.” The standard of review for a
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`Rule 12(c) motion for judgment on the pleadings is the same as the standard for a motion to
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`dismiss. Ward v. Utah, 321 F.3d 1263, 1266 (10th Cir. 2003); see also Cappetta v. GC Services
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`Ltd. P’ship, 654 F. Supp. 2d 453, 456 (E.D. Va. 2009) (citing Burbach Broad. Co. v. Elkins
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`Radio Corp., 278 F.3d 401, 405-06 (4th Cir. 2002); Edwards v. City of Goldsboro, 178 F.3d 231,
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`243 (4th Cir. 1999)). Accordingly, the facts as alleged by Nicolon in its Answer should be taken
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`as true for purposes of this motion. Erickson v. Pardus, 127 S.Ct. 2197, 2200 (2007) (citing Bell
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`Atlantic Corp. v. Twombly, 127 S.Ct. 1995, 1965 (2007) (when ruling on a defendant’ motion to
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`dismiss, judge must accept as true all of the factual allegations contained in the complaint). The
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`Board may grant a motion for judgment on the pleadings when no genuine issues of material fact
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`remain and the case can be decided as a matter of law. Id.
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`In considering a motion for judgment on the pleadings, all reasonable inferences are
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`drawn in the non-moving party’s favor. See e.g. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
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`1313, 1323 (Fed. Cir. 2002). However, “[a]lthough a moving party, for purposes of the Rule
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`12(c) motion, concedes the accuracy of the factual allegations in his adversary’s pleading, he
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`does not admit other assertions in the other party’s pleading that constitutes conclusions of law,
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`legally impossible facts, or matters that would not be admissible in evidence at trial.” Wright &
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`Miller, 5C Federal Practice and Procedure: Civil 2d § 1368 (2d ed. 1995) (citing, inter alia,
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`Grindstaff v. Green, 133 F.3d 416 (6th Cir. 1998); Duhame v. U.S., 119 F.Supp. 192 (Ct. Cl.
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`1954)).
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`A dismissal pursuant to Rule 12(c) is with prejudice. LaRue v. DeWolff, Boberg &
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`Associates, Inc., 450 F.3d 570 (4th Cir. 2006): U.S. ex rel Bledsoe v. Community Health Systems,
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`Inc., 501 F.3d 493 (6th Cir. 2007); Jung v. Association of American Medical Colleges, 184
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`Fed.Appx. 9 (D.C. Cir. 2006); Bull v. U.S., 63 Fed.Cl. 580 (Fed.Cl. 2005); J. Moore, et al., 11-56
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`Moore’s Federal Practice – Civil § 56.30 (Rule 12(c) motions for judgment on the pleadings
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`result in final adjudication of a case or claim).
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`ARGUMENT
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`In accordance with 15 U.S.C. § 1052(e), “no trademark by which the goods of applicant
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`may be distinguished from the goods of others shall be refused registration on the principal
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`register on the account of its nature unless it [c]onsists of a mark … comprises any matter that,
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`as a whole, is functional.” (Emphasis added). Pursuant to TMEP § 1202.05, “color marks are
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`never inherently distinctive, and cannot be registered on the Principal Register without a showing
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`of acquired distinctiveness under § 2(f) of the Trademark Act.” Applicant has failed to make this
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`required showing.
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`In Paragraphs 40 and 41 of its Answer, Applicant admits its trademark application makes
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`claim to the entire orange spectrum. Applicant even admits in Paragraph 7 of its Answer that
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`“orange geotextile safety fencing is used on construction sites.”
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`Geosynthetics and geotextiles, both woven and nonwoven, are used above and below
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`ground – the use of the color orange is functional for all purposes in this market.
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`The Application’s statement of goods and services does not differentiate between above
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`ground and below ground use. Its statement of the goods is not limited to above or below
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`ground, and therefore encompasses both. Applicant’s products are at some point during their
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`“life” above ground – as clearly seen by its own evidence of its 2(f) distinctiveness claim: a
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`photograph of the product above ground (“Exhibit B”). By its own admissions: (1) the color
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`orange contrasts visibly with dark soils; (2) orange used on geosynthetics and geotextiles is
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`“high[ly]-visib[le],” a “visual barrier,” a “visual excavation barrier,” and a “visual dig barrier”;
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`and (3) the visibility of the orange fabric is essential to the use or purpose of its geosynthetics
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`and geotextiles products. As such, it is functional.
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`Qualitex holds a feature is functional if the “exclusive use of [which] would put
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`competitors at a significant non-reputation-related disadvantage.” 514 U.S. at 165. Applicant has
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`admitted in Paragraph 5 of the Answer that “the color orange is used for traffic cones and
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`hunting vests,” in Paragraph 7 of the Answer that “orange geotextile safety fencing is used on
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`construction sites,” and in accordance with Fed. R. Civ. P 8(b) has admitted in Paragraph 11 of
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`the Answer that “[t]he color orange contrasts visibly with dark soils.”
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`Just like the applicant in Brunswick, the Applicant here attempts to register “a color
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`which should be available for use by all [competitors] of these products because they need to use
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`it to compete effectively.” 35 F.3d at 1533. Applicant’s admissions combined with the Qualitex
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`inquiry that other competitors in this industry (e.g. Dandy, Willacoochee, and Opposer) have and
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`are using the color orange to function as a warning, show the color orange is functional in this
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`market. Applicant’s competitors would be put at a “significant non-reputation-related
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`disadvantage” if they were not allowed to use the color orange on geosynthetics and geotextiles.
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`Qualitex, 514 U.S. at 165. Further, this would enact significant harm to all of the competitors in
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`the entire market of geosynthetics and geotextiles. Thus Applicant’s use is functional.
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`According to TMEP § 1212, in order to establish secondary meaning, “it must be shown
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`that the primary significance of the term in the minds of the consuming public is not the product
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`but the producer.” (Emphasis added). Orange, such as “safety orange,” has long been used in the
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`construction industry as a visual cue (long before 2010). As orange is commonly used in the
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`construction industry, Applicant’s use of the orange color functions as a visual warning, despite
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`its self-serving statement about its intent. The use of orange on geosynthetics and geotextiles for
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`safety or as a warning is ubiquitous. All are used as visual cues. Applicant’s distinction between
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`woven and nonwoven is irrelevant – see Exhibit C showing a comparison of its specimen
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`provided to the Trademark Office; with a photo of the product Mirafi® Orange Delineation
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`which Applicant has admitted is “highly visible” and “serves as a warning to construction
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`workers.” While Applicant is attempting to differentiate between woven and nonwoven products
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`in these oppositions, for all practical purposes, woven and nonwoven products look strikingly
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`similar.1 An individual encountering an orange geosynthetic or geotextile would not ask
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`themselves “Is this woven or nonwoven?” and come to the conclusion that only if it was
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`nonwoven would it be a visual cue. Instead, the individual would be alerted to stop digging once
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`they encountered an orange product. The inquiry is not into what Nicolon says about how it
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`intends the color orange to be used, but instead into how the consuming public views the color.
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`Here, orange serves as a visual cue that alerts an individual of its presence. The color orange is
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`functional. Indeed, Nicolon seeks to secure for itself alone the right to use orange on these goods.
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`Such must not be permitted.
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`By its own admissions, Nicolon’s use of the color orange in connection with the goods
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`named in its Application is functional. Orange is a known visual cue to the consuming public.
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`1 If the Board was given a copy of the two photographs in Exhibit B without the labels, we suspect the Board would
`have a difficult time differentiating the two products in determining which product is woven (incorporating the
`alleged trademark) and which is nonwoven.
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`Thus orange cannot function as a trademark for these goods and is not entitled to protection.
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`Accordingly, Opposer respectfully requests that the Board enter judgment on the pleadings and
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`reject Applicant’s Application with prejudice.
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`CONCLUSION
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`For the reasons set forth more fully above, Opposer respectfully requests this Board grant
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`Opposer Lumite’s Motion for Judgment on the Pleadings pursuant to Fed. R. Civ. Proc. 12(c),
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`and reject Applicant’s Application with prejudice.
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`Respectfully submitted this 3rd day of June, 2015.
`
`/Lauren W. Brenner/
`Lauren W. Brenner
`GA Bar No. 364286
`Bradley K. Groff
`GA Bar No. 312930
`Arthur A. Gardner
`GA Bar No. 283995
`GARDNER GROFF, GREENWALD & VILLANUEVA, P.C.
`2018 Powers Ferry Road, Suite 800
`Atlanta, Georgia 30339
`Tel: (770) 984-2300
`trademark@gardnergroff.com
`lbrenner@gardnergroff.com
`bgroff@gardnergroff.com
`agardner@gardnergroff.com
`
`
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`Attorneys for Opposer, Lumite, Inc.
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`15
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`

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`EXHIBIT A
`EXHIBIT A
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`Proceedings of the Human Factors and Ergonomics Society 58th Annual Meeting - 2014
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`1879
`
`A Perceptual Analysis of Standard Safety,
`Fluorescent, and Neon Colors
`
`Olga A. Zielinska, Michael S. Wogalter, and Christopher B. Mayhorn
`North Carolina State University
`Psychology Department, 640 Poe Hall, Raleigh, NC 27695-7650 USA
`
`Twenty-six standard safety colors specified by the American National Standards Institute (ANSI),
`International Standards Organization (ISO), and the Federal Highway Association (FHWA) were compared
`to seven fluorescent and neon colors on perceived hazard and perceived importance. Results indicated that
`the fluorescent orange, ANSI red, fluorescent yellow, FHWA red, fluorescent yellow green, and ISO red
`were the highest rated colors on perceived hazard. ANSI red, FHWA red, ISO red, fluorescent orange,
`fluorescent yellow, and fluorescent yellow green were rated the highest on perceived importance. The
`implications of these findings and the potential use of fluorescent colors in product warnings are discussed.
`
`used only one fluorescent color (yellow-green) and evaluated
`attention-related measures, but not hazard connotation.
`The Scheiber et al. (2006) study suggests, fluorescent
`colors may aid in attention, probably because they are brighter
`than other colors in the surrounding context. Another
`potential benefit of fluorescent colors is that objects in
`fluorescent colors may be perceived as having greater
`importance than objects in standard colors. If so, then this
`attribute could be useful in drawing and maintaining attention
`to warning signs and labels. No research to date has evaluated
`perceived importance of standard safety or alternative (e.g.,
`fluorescent) colors (see a review in Wogalter, Mayhorn &
`Zielinska, 2015). Potentially, some colors may be evaluated
`as high in importance but low in hazard, or vice versa.
`The present study evaluated perceived hazard and
`perceived importance for standard (non-fluorescent) and
`fluorescent colors.
`
`
`METHOD
`
`Colors
`
`
`A total of 33 colors were used. Colors were chosen from
`those promulgated by the American National Standard
`Institute (ANSI Z535.1), International Organization for
`Standardization (ISO 3864-4), United States Department of
`Transportation Federal Highway Administration (FHWA),
`Pantone neon colors, and 3M Company.
`ANSI Z535.1 (2012) defines a set of safety colors for use
`in warning signs, labels, and tags. Munsell Color (Grand
`Rapids, Michigan) produces 22 x 28 cm (8.5 x 11 inch) sheets
`of the ANSI safety colors. The colors safety red, safety
`orange, safety yellow, safety green, safety blue, safety purple,
`safety brown, safety gray, safety black, and safety white were
`used.
`The safety colors in ISO 3864-4 (Graphical Symbols –
`Safety Colours and Safety Signs (2011) standard lists RAL,
`Munsell, BS 5252, and NCS color equivalents for its safety
`colors. RAL, Munsell, BS 5252, and NCS are referenced to
`accurately print the colors. While the safety colors can be
`printed using any of these “equivalent” methods, in this study
`RAL color sheets were used: RAL 3001, RAL 1003, RAL
`6032, RAL 5005, RAL 9003, RAL 9004 for red, yellow,
`
`
`
`INTRODUCTION
`
`
`Color is frequently used to alert, aid comprehension, and
`increase the visibility of warnings (Wogalter & Vigilante,
`2006). Using various participant groups, researchers have
`found that the color red consistently rated as the highest
`perceived hazard compared with other colors using various
`participant groups (Griffith & Leonard, 1997; Wogalter et al,
`1998; Dunalp, Granda, & Kustas, 1986; Borade, Bansod, &
`Gandhewar, 2008; Smith-Jackson & Wogalter, 2000).
`Yellow, orange, and black are rated the next highest on
`perceived hazard (Smith-Jackson & Wogalter, 2000; Wogalter
`et al., 1998).
`Fluorescent colors are starting to be used in
`environmental sign warnings. Fluorescent colors interact with
`ultraviolet (UV) light making them appear brighter, and thus
`more conspicuous, than non-fluorescents (Burns & Pavelka,
`1995). However, little is known about their hazard
`connotation, or perceived hazard.
`Only one study has compared the hazard connoted by
`standard safety colors to fluorescent colors. Tomkinson and
`Stammers (2000) investigated the perceived hazard of
`fluorescent colors and how they compared to non-fluorescent
`colors. Undergraduates rated fluorescent red the highest in
`connoted hazard followed by fluorescent orange, fluorescent
`yellow, and orange, which w