Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA969689
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`Filing date:
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`04/26/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92068857
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`Party
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`Correspondence
`Address
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`Defendant
`SafeRack, LLC
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`SARA C KANOS
`NEXSEN PRUET LLC
`55 E CAMPERDOWN WAY, SUITE 400
`GREENVILLE, SC 29601
`UNITED STATES
`skanos@nexsenpruet.com, cblackburn@nexsenpruet.com,
`mmanos@nexsenpruet.com, dleclerc@nexsenpruet.com
`864-282-1171
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Other Motions/Papers
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`Sara Centioni Kanos
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`skanos@nexsenpruet.com, ustrademark@nexsenpruet.com
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`/sara centioni kanos/
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`04/26/2019
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`Response to Board for filing.pdf(59487 bytes )
`Ex A Fed Judmt and Order.pdf(2534991 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Trademark
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`Registration No. 5211514
`Registration Date: May 30, 2017
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`Mark:
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`Bullard Company,
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`Petitioner,
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`v.
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`SafeRack, LLC,
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`Registrant.
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`Cancellation No. 92068857
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`REGISTRANT’S RESPONSE RE: SUSPENTION NOTICE
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`In the Matter of Cancellation No. 92068857 (the “Cancellation”), SafeRack, LLC
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`(“Registrant”) hereby advises the Board that the Civil Action in the United States District
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`Court, District of South Carolina, Charleston Division (Civil action No. 2:17-cv-1613-
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`RMG) has concluded, and all avenues for appeal terminated.
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`As shown by the attached summary judgment order (“Federal Judgment,”
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`Exhibit A), the District Court made the following findings and conclusions:
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`•
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`“[T]he Court concludes that there is no dispute of material fact that
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`SafeRack has ownership of an orange color mark…, that Bullard used the
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`mark in commerce without authorization…, and that this use was likely to
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`cause confusion.” (Order, p. 14).
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`•
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`“[T]here is no material dispute that SafeRack’s orange color mark is
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`nonfunctional.” (Order, p. 16).
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`•
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`“[T]here is no material dispute that Bullard’s use of orange did not
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`constitute fair use.” (Order, p. 16).
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`•
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`“[I]t is undisputed that SafeRack’s mark is not generic.” (Order, p. 17).
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`•
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`“[I]t is undisputed that SafeRack’s mark is distinct.” (Order, p. 17).
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`•
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`“[I]t is undisputed that SafeRack did not abandon the orange color mark.”
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`(Order, p. 18).
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`•
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`“It is … undisputed that the registration was not obtained fraudulently.”
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`(Order, p. 18).
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`•
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`“Bullard is not entitled to summary judgment on any of its affirmative
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`defenses, and, … SafeRack is entitled to summary judgment on its
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`Lanham Act trademark infringement claim.” (Order, p. 18).
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`•
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`“SafeRack is entitled to a permanent injunction against Bullard using the
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`color orange as applied to railings, gates, and cages of fall protection
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`equipment.” (Order, p. 20).
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`2
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`The District Court confirmed the Federal Judgment in a subsequent order on
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`motion for reconsideration, and all further appeals are now exhausted. See Order on
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`Reconsideration, also part of Exhibit A. Accordingly, the Board should end the
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`suspension and grant Registrant’s forthcoming Motion for Summary Judgment.
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`Respectfully submitted,
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`NEXSEN PRUET, LLC
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`
`
`__________________
`Sara C. Kanos
`Cherie Blackburn
`Marc A. Manos
`55 E. Camperdown Way, Suite 400
`Greenville, South Carolina 29601
`(T) 864.282.1171
`(F) 864.282.1177
`e-mails: skanos@nexsenpruet.com;
`cblackburn@nexsenpruet.com;
`mmanos@nexsenpruet.com;
`dleclerc@nexsenpruet.com
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`Attorneys for Registrant
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`April 26, 2019
`Greenville, SC
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`3
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark
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`Registration No. 5211514
`Registration Date: May 30, 2017
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`Mark:
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`Bullard Company,
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`
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`Petitioner,
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`v.
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`SafeRack, LLC,
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`Registrant.
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`Cancellation No. 92068857
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`CERTIFICATE OF SERVICE
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`I, Sara C. Kanos, attorney of Nexsen Pruet, LLC, attorneys for Registrant, hereby
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`certify that a true, correct, and complete copy of the foregoing
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`RESPONSE TO BOARD
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`was served on Petitioner’s attorney of record at the following address:
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`
`Todd M. Hess
`Barnwell Whaley Patterson & Helms LLC
`288 Meeting St. STE 200
`Charleston, SC 29401
`thess@barnewell-whaley.com
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`postage prepaid by first-class mail on April 26, 2019.
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`4
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`Executed on April 26, 2019 at Greenville, South Carolina.
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`NEXSEN PRUET, LLC
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`______________________________________________
`Sara C. Kanos
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`5
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the matter of Trademark
`
`Registration No. 5211514
`Registration Date: May 30, 2017
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`Mark:
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`
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`
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`Bullard Company,
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`
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`Petitioner,
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`v.
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`SafeRack, LLC,
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`Registrant.
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`Cancellation No. 92068857
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`EXHIBIT A: Federal Judgment and Related Order
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF SOUTH CAROLINA
`CHARLESTON DIVISION
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`SafeRack, LLC,
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`Plaintiff,
`
`V.
`
`Bullard Company,
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`Defendant.
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`)
`)
`)
`)
`)
`)
`)
`)
`)
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`Civil Action No. 2: 17-cv-1613-RMG
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`ORDER AND OPINION
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`This matter is before the Court on cross-motions for Summary Judgment. For the reasons
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`set forth below, the Court grants in part and denies in part Defendant's Motion for Summary
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`Judgment and grants in part and denies in part Plaintiffs Motion for Summary Judgment.
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`I.
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`Background
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`Plaintiff SafeRack, LLC ("SafeRack") and Defendant Bullard Company ("Bullard") both
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`produce and sell safe access and loading units, often for use by industries involved in loading and
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`unloading transportation vehicles such as trains, trucks and ships. These safe access and loading
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`units have fall protection equipment, such as safety cages, gates and railings. No later than 2003,
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`SafeRack began selling fall protection equipment that included the color orange. (Dkt. Nos. 50-2
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`at 3; 50-3.) Bullard, though a 30(b)(6) witness, acknowledged that he had seen SafeRack products
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`with orange on its "standard truck loading, railcar loading, and access platforms, gangways and
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`gates" prior to June 2017. 1 (Dkt. No. 50-14 at 16, 20, 25.) On May 30, 2017, after a three year
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`examination, the United State Patent and Trademark Office ("USPTO") registered SafeRack's
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`1 Bullard alleges there is a dispute regarding when it first learned of SafeRack's use of orange on
`equipment. (Dkt. No. 57 at 11 - 12.) However, Bullard identifies no evidence disputing the
`testimony of its 30(b)(6) witness, and instead only disputes the reason it chose to use orange and
`when it was actually informed that orange refers to SafeRack. (Dkt. No. 57-10 at 4.)
`
`-1-
`
`

`

`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 2 of 23
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`Design Mark No. 5,211,514. (Dkt. No. 50-4.) The registration included a photo of a gangway:
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`(Id.) The registration further stated that "[t]he color(s) orange is/are claimed as a feature of the
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`mark. The mark consists of the color orange as applied to railings, gates and cages of fall
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`protection equipment. The product configuration depicted in dotted lines is not claimed as a
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`feature of the mark and serves only to show placement of the mark on the goods." (Id.) In addition
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`to the registered mark, SafeRack submitted photos of equipment it had manufactured that included
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`the color orange on the railings, gates and cages, a copy of which is included below as an example:
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`(Dkt. No. 50-21.)
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`In June 2017, Bullard attended the Independent Liquid Terminals Association ("IL TA")
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`trade show and showcased a work platform and gangway with orange railings and other features.
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`(Dkt. Nos. 49-1 at 8; 50-10 at 36.)
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`-2-
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 3 of 23
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`(Dkt. Nos. 49-1 at 8; 50-13 ; 50-16.) On June 12, 2017, SafeRack sent a cease and desist letter to
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`Bullard after Bullard' s platform was shown at ILTA. Bullard asserts that while it showcased the
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`units, it never sold any with that configuration. (Dkt. No. 49-1 at 8, 15.) SafeRack presented no
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`evidence that Bullard ever sold a work platform or gangway as showcased at the IL TA.
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`Instead, both parties agree that since 2015 Bullard has sold at least six2 mobile access
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`platforms ("MAP") with gray railings, cages, and fall protection with an orange vehicle base.
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`(Dkt. Nos. 49-1 at 8; 50-1 at 31 ; 50-22.)
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`2 SafeRack asserts Bullard sold seven units. (Dkt. No. 50-1 at 31 .)
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`-3-
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 4 of 23
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`On September 17, 2018, SafeRack and Bullard both filed motions for summary judgment.
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`(Dkt. Nos. 49, 50.) Both responded in opposition to the other parties' motion. (Dkt. Nos. 54, 57.)3
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`II.
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`Legal Standard
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`To prevail on a motion for summary judgment, the movant must demonstrate that there is
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`no genuine issue of any material fact and that the movant is entitled to judgment as a matter of
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`law. Fed. R. Civ. P. 56(a). The party seeking summary judgment has the burden of identifying
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`the portions of the "pleadings, depositions, answers to interrogatories, any admissions on file,
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`together with the affidavits, if any, which show there is no genuine issue as to any material fact
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`and that the moving party is entitled to judgment as a matter of law." Celotex Corp. v. Catrett,
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`477 U.S. 317, 322 (1986). The Court will construe all inferences and ambiguities against the
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`movant and in favor of the non-moving party. US. v. Diebold, Inc., 369 U.S. 654,655 (1962).
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`The existence of a mere scintilla of evidence in support of the non-moving party's position is
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`insufficient to withstand a motion for summary judgment. Anderson v. Liberty Lobby, Inc., 4 77
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`U.S . 242,252 (1986). However, an issue of material fact is genuine if the evidence is such that a
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`reasonable jury could return a verdict in favor of the non-movant. Id. at 257.
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`"When the moving party has carried its burden under Rule 56(c), its opponent must do
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`more than simply show that there is some metaphysical doubt as to the material facts." Matsushita
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`Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,586 (1986). "In the language of the Rule,
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`the nonmoving party must come forward with 'specific facts showing that there is a genuine issue
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`for trial."' Id. at 587. "Where the record taken as a whole could not lead a rational trier of fact to
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`3 Concurrent with this Order and Opinion, the Court issued an Order and Opinion granting
`SafeRack's motion to exclude Bullard's expert Jill Morton (Dkt. No. 47) and granting Bullard's
`motion to exclude SafeRack's expert Dr. Eli Seggev (Dkt. No. 48). As the Court will not consider
`the inadmissible evidence from Jill Morton, the Court denies as moot SafeRack's motion to strike
`references to Jill Morton in Bullard's motion for summary judgment. (Dkt. No. 53.)
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`-4-
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 5 of 23
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`find for the non-moving party, there is no 'genuine issue for trial."' Id. (quoting First Nat 'l Bank
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`of Ariz. v. Cities Serv. Co., 391 U.S. 253,289 (1968)).
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`III. Discussion
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`SafeRack argues that Bullard's use of orange on "gangways, railings, and gates" at the
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`ILTA in 2017 and Bullard's sale of MAPs infringed on its trademark and trade dress and
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`constituted unfair competition in violation of the Lanham Act and the South Carolina Unfair Trade
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`Practices Act ("SCUTP A"). SafeRack also brought a claim for unjust enrichment. Bullard argues
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`that the use of orange on its equipment was not likely to cause confusion, and presents six
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`affirmative defenses.
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`As the Fourth Circuit has explained, to establish trademark infringement a plaintiff must
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`prove:
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`(I) that it owns a valid mark; (2) that the defendant used the mark 'in commerce'
`and without plaintiff's authorization; (3) that the defendant used the mark (or an
`imitation of it) 'in connection with the sale, offering for sale, distribution, or
`advertising' of goods or services; and (4) that the defendant's use of the mark is
`likely to confuse customers.
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`Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012); see also 15 U.S.C. §
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`l l 14(l)(a). As explained below, since there are no disputes of material facts regarding all four
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`elements and Bullard presents no meritorious defenses, the Court grants summary judgment for
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`SafeRack on its claim for trademark infringement.
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`A. Ownership of Valid Mark
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`There is no dispute that SafeRack owns a valid trademark to the color orange as applied to
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`railings, gates, and cages of fall protection equipment. Generally, "the party claiming ownership
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`of a mark must be the first to use the mark in the sale of goods. The party claiming ownership must
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`also use the mark as a trademark, that is, the mark must be used to identify the source of the goods
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`to potential customers." George & Co., LLC v. Imagination Entm 't Ltd., 575 F.3d 383, 400 (4th
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`-5-
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 6 of 23
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`Cir. 2009) (internal citation omitted). Furthermore, "[r]egistration grants a presumption of
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`ownership, dating ownership to the filing date of the federal registration application .... " Id. at 400
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`n.15 (emphasis omitted); see also 15 U.S.C. § 1115(a). Finally, color alone can serve as a
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`trademark where it has acquired secondary meaning. See Qualitex Co. v. Jacobson Prod. Co., 514
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`U.S. 159,163 (1995).
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`Here, SafeRack has a presumption of ownership of its mark datin~ to June 11, 2014, when
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`its trademark was filed with the USPTO. (Dkt. Nos. 50-4; 50-7.) SafeRack further presented
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`evidence that it sold its first loading rack with orange colored components in September 2003.
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`(Dkt. No. 50-2 at 3; 50-3.) Bullard has presented no evidence to dispute this fact. The record
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`evidence demonstrates that Bullard first showcased orange on the railings of its fall protection
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`equipment in June 2017, after SafeRack's registration was both filed and granted. (Dkt. Nos. 49-
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`1 at 8; 50-25; 50-10 at 36.) SafeRack therefore owns a valid trademark to the color orange as
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`applied to railings, gates, and cages of fall protection equipment.
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`H~wever, SafeRack has not presented any evidence that it owns a valid trademark to orange
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`appearing anywhere else on its safe access and loading units. To begin with, the presumption
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`applies only to the trademark issued by the USPTO, which is limited to "the color orange as applied
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`to railings, gates, and cages of fall protection equipment." (Dkt. No. 50-4) (emphasis added).
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`Furthermore, SafeRack in its motion describes the mark as limited to "orange on specific portions
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`of gangways, railings, gates, and mobile access units-industry ("MAUI") ... that SafeRack
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`manufactures and sells." (Dkt. No. 50-1 at 2.) See also (Dkt. No. 50-1 at 21; "The vast majority
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`of them have nothing to do with this field-they are not metallic gangways, railings, gates and
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`other fall prevention components of industrial loading and MAUI applications."). Finally,
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`SafeRack has presented no evidence that it has ever used orange on areas of its equipment other
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`-6-
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 7 of 23
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`than railings, gates and cages as a mark. All photographs SafeRack has presented includes orange
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`solely on the gangways, railings, cages and gates of its equipment.4 (Dkt. Nos. 50-11; 50-12; 50-
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`21.) Testimony from SafeRack consumers also confirmed this point.
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`PJ Fjeld-Hansen, a
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`purchaser of SafeRack products, testified that he identified a gangway as a SafeRack product
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`through orange on top railings, midrails and a springcover. 5 (0kt. No. 50-6 at 3 - 4.) Another
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`consumer, Thomas Hansen, further testified it was orange gangways that identified SafeRack.
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`(Dkt. No. 50-10 at 14.)
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`Therefore, it is undisputed that SafeRack owns a trademark to the color orange specifically
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`as applied to railings, gates, and cages of fall protection equipment.
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`B. Used in Commerce Without Consent
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`There is no dispute that Bullard used this mark in commerce without consent. Bullard
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`admits that it showcased a work platform and gangway with orange railings and cages at the IL TA
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`in June 2017. (Dkt. Nos. 49-1 at 8; 50-10 at 36.) There is no evidence that Bullard used the mark
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`without consent at any other time. The only other evidence of Bullard using orange on its
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`equipment is its use of orange on the vehicle base of seven MAPs it sold in 2015 and 2016. (Dkt.
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`No. 50-25.) However, the vehicle base of the MAP included no railings, gates, cages, or any other
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`type of fall protection equipment. (Dkt. No. 50-22.) Indeed, the only fall protection equipment
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`on the MAP that included any color, a staircase with railings, was painted yellow. (Id.) Therefore,
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`it is undisputed that Bullard used Safe Rack's mark in commerce without consent at the IL TA in
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`June 2017 and at no other time.
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`C. Offer for Sale or Advertising of Goods and Services
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`4 Even its MAUI, a product SafeRack alleges Bullard's MAP infringes upon, only uses orange on
`its railings. (Dkt. No. 50-11.)
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`5 Mr. Fjeld-Hansen referred to a spring cover as a "bottom rail."
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`-7-
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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 8 of 23
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`There is no dispute that Bullard showcased and advertised the work platform and gangway
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`with orange railings and cages at the June 2017 ILT A. The ILTA is an important trade show in
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`Bullard and SafeRack's industry.
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`(Dkt. No. 50-15 at 4.) Therefore, it is undisputed that by
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`showcasing a work platform and gangway with orange railings and cages, Bullard used the mark
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`in connection with the advertising of goods or services.
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`D. Likelihood of Confusion
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`There is no material dispute that Bullard' s use of orange on fall protection equipment is
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`likely to cause confusion with consumers. The Fourth Circuit has articulated nine factors relevant
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`to determining likelihood of confusion:
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`(1) the strength or distinctiveness of the plaintiffs mark as actually used in the
`marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of
`the goods or services that the marks identify; ( 4) the similarity of the facilities used
`by the markholders; (5) the similarity of advertising used by the markholders; (6)
`the defendant' s intent; (7) actual confusion; (8) the quality of the defendant's
`product; and (9) the sophistication of the consuming public.
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`Rosetta Stone Ltd., 676 F.3d at 153. The Court considered each of these factors and, as discussed
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`below, determined there is no material dispute regarding likelihood of confusion. 6 At the outset,
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`the Court notes that this case arose in unusual factual circumstances for a trademark case. Here,
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`the alleged infringing goods, Bullard's work platforms and gangway with orange on the railings,
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`were never sold or distributed and the record evidence indicates that they were only shown at a
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`single tradeshow.
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`(Dkt. No. 49-1 at 8, 15.) Once SafeRack delivered its cease and desist letter
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`after the tradeshow, Bullard did not engage in any further attempts to market the allegedly
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`infringing product until these legal challenges have beeri decided. (Id. at 19.)
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`i.
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`Strength and Distinctiveness of Mark
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`6 Neither party presented any evidence regarding intent, the sophistication of the consumers here,
`or the quality of Bullard' s products.
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`-8-
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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 9 of 23
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`There is no material dispute that SafeRack has a strong and distinctive mark.
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`It is
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`undisputed that SafeRack uses the mark in its advertising slogan ("Orange. Safety has a new
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`color"), and has used the mark in the marketplace since at least 2003. Furthermore, SafeRack has
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`spent between $925,000 and $2,560,000 each year from 2014 to 2017 advertising products with
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`its orange mark.
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`(Dkt. No. 50-19.) Finally, SafeRack submitted undisputed testimony from
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`multiple consumers that orange on fall protection equipment identified SafeRack products and,
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`until Bullard, no competitors who sold similar equipment in its industry used the color orange on
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`fall protection equipment. 7 (Dkt. No. No. 50-6 at 3 -4; 50-8 at 14; 50-10 at 14.)
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`Bullard does not dispute these facts, and instead argues that while SafeRack may have a
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`distinctive orange mark as shown on the USPTO trademark certificate, SafeRack cannot show
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`strength or distinctiveness for "orange in all of its shades," focusing on the fact that the shade of
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`orange on the trademark registration and SafeRack's equipment differs from the orange used on
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`Bullard's equipment. (Dkt. No. 49-1 at 11-13.) However, Bullard, in making its argument, relies
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`on Campbell Soup Co. v. Armour & Co., 175 F.2d 795 (3d Cir. 1949), a case abrogated by the
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`Supreme Court, which denied protection to red and white on soup cans because if Campbell could
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`"monopolize red in all of its shades" and competitors follow suit, "the list of colors will soon run
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`out." This is no longer the law, and instead, the Supreme Court recognized "that color alone, at
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`least sometimes, can meet the basic legal requirements for use as a trademark." Qualitex Co. v.
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`Jacobson Prod. Co., 514 U.S. 159, 166 (1995). Courts also recognize that a color mark does not
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`need to be constrained to a single color and some color variance does not negate a strong mark.
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`7 While Bullard, in its response in opposition, claims to dispute certain aspects of the testimony of
`three consumers, PJ Fjeld-Hansen, Joseph Henderson, Jr., and Thomas Hansen, it does not dispute
`that testimony relied on by the Court in granting summary judgment. Furthermore, many of the
`alleged disputes are based on out of context testimony or are irrelevant to the disposition of this
`case.
`
`-9-
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`

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`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 10 of 23
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`See T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 910-11 (S.D. Tex. 2014) (while
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`the " record shows modest variations in shades of magenta" it does not "put(] T-Mobile in the
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`position of seeking protection for such a wide range of magenta shades that it is entitled to no
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`protection at all," and "Aio has not cited persuasive or binding authority that some tolerated color
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`variance precludes secondary meaning.").
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`Here, there is no dispute SafeRack placed the color orange in a context that seems unusual
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`and distinctive, namely, on railings, cages, gates and other fall protection equipment, and used it
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`continuously in the marketplace. See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 163, 115
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`S. Ct. 1300, 1303, 131 L. Ed. 2d 248 (1995) ("customers may come to treat a particular color on a
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`product or its packaging (say, color that in context seems unusual, such as pink on a firm's
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`insulating material or red on the head of a large industrial bolt) as signifying a brand."). There is
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`therefore no dispute that SafeRack has a strong mark.
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`ii.
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`Similarity of Marks
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`There is no material dispute that Bullard' s use of orange on railings, gates and cages of fall
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`protection equipment, is similar to SafeRack's mark. As demonstrated by the photos of the
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`equipment included above, Bullard's equipment showcased at the 2017 ILTA included orange on
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`the railings, gates and cages of gangways and other safe access equipment, just as SafeRack's
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`similar equipment. (Dkt. Nos. 49-1 at 8; 50-13; 50-16; 50-21.)
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`Bullard attempts to dispute the similarity of the marks again by focusing on the shade of
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`orange, arguing that the orange used on its equipment was different from the shades of orange on
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`SafeRack's equipment. 8 However, again, the question is whether the marks are similar such to
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`8 The Court notes that, in addition to SafeRack having no ownership of a mark for orange on a
`vehicle base, Bullard's use of orange on the MAP is not similar to SafeRack's mark. As noted
`
`-10-
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`

`

`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 11 of 23
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`cause confusion, not whether the specific shade comports perfectly to prior use. The fact that
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`marks may use different shades of the color does not preclude a finding of similarity. See Cava
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`Grp., Inc. v. Mezeh-Annapolis, LLC, No. GJH-14-355, 2016 WL 3632689, at *8 (D. Md. July 7,
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`2016) ("[defendants] have cited no cases suggesting that a plaintiffs federal registration of one
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`color precludes it from seeking protection of its use of another similar color."); The Youngstown
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`Sheet & Tube Co., 149 U.S.P.Q. (BNA) 656 (P.T.O. Mar. 24, 1966) (finding gold and orange are
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`substantially similar and, when used by both parties in a similar way on their products, were likely
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`to cause confusion). Therefore, there is no dispute that the marks, both in terms of the placement
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`of the orange and the shade of orange used, are similar.9 (See 50-16; 50-21.)
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`iii.
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`Similarity of Goods
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`There is no material dispute that the mark was used on similar goods. Bullard's 30(b)(6)
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`witness acknowledged that the type of equipment Bullard showcased at the 2017 IL TA with orange
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`railings, cages and gates is equipment that directly competes with SafeRack. (Dkt. No. 50-14 at
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`6.) Therefore, the equipment Bullard showed at the 2017 ILTA is similar to SafeRack's safe access
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`units and equipment for loading and unloading transportation vehicles. IO
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`above, on the MAP the only orange is on the vehicle base, not on any railings, cages or gates. The
`only fall protection equipment on the MAP that includes color is a yellow staircase.
`
`9 Bullard also relies on the report of an expert, Jill Morton, to argue that the shades of orange used
`by SafeRack and Bullard are "significantly different." However, as noted above, the Court held
`that Jill Morton's opinions are inadmissible under Fed. R. Evid. 702. Therefore, the Court declines
`to consider any evidence from Jill Morton on summary judgment as it is inadmissible and not
`considered under Fed. R. Civ. P. 56(c). The Court also notes that, even if admissible, Ms. Morton's
`opinion regarding the difference in the shades of orange used by SafeRack and Bullard is
`irrelevant. As discussed above, a color mark does not need to be confined to a single shade and
`the question is whether the orange used, regardless of specific shade, is likely to cause to confusion
`as used on Bullard's equipment.
`
`IO Regarding the similarity of goods, Bullard only argues that its MAP is not similar to goods sold
`by SafeRack. However, Bullard's use of orange on the MAP does not implicate any ofSafeRack's
`marks.
`
`-11-
`
`

`

`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 12 of 23
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`iv.
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`Similarity of Facilities and Similarity of Advertising
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`There is no material dispute that Bullard and SafeRack use similar facilities and
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`advertising. Both Parties sell their products to the same consumers, in the same market, and use
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`similar advertising. Further, Bullard's 30(b)(6) witness acknowledged that its products are
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`marketed towards substantially the same consumers as SafeRack, and listed SafeRack as a
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`competitor. (Id. at 5 - 7.) It is also undisputed that both attend the ILTA tradeshow, use personal
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`contacts, catalogues and a website to market their products. (Dkt. Nos. 49-2 at 3; 50-14 at 10 -
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`11.)
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`While Bullard does not dispute these facts, it instead asks the Court to focus on the
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`differences in production process between SafeRack and Bullard' s equipment rather than the
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`similarity in facilities used to sell the products. However, "when considering the similarity of
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`facilities, courts are trying to determine if confusion is likely based on ' how and to whom the
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`respective goods of the parties are sold,' and the key question is whether ' both products [are] sold
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`in the same ' channels of trade. "' Rosetta Stone Ltd. , 676 F.3d at 155. Therefore, the there is no
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`material dispute that SafeRack and Bullard use similar facilities and advertising.
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`v.
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`Actual Confusion
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`"Actual confusion can be demonstrated by both anecdotal and survey evidence." Rosetta
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`Stone Ltd. , 676 F.3d at 156 citing George & Co., 575 F.3d at 398. "Both types of evidence are
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`relevant, and neither category is necessarily required to prove actual confusion."
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`Id. Here,
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`SafeRack presented the evidence of at least one consumer, Thomas Hansen, who stated that when
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`he saw Bullard's products at the 2017 ILTA show, he thought "they are piggy backing off of
`
`-12-
`
`

`

`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 13 of 23
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`SafeRack." 11
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`(Dkt. No. 50-10 at 37.) While evidence of actual confusion is limited since the
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`marketing of the challenged equipment was limited to a single tradeshow, Bullard has failed to
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`present any evidence rebutting even the limited evidence of actual confusion. 12 Therefore, there
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`is no material dispute on the issue of actual confusion. 13
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`vi.
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`Likelihood of Confusion Overall
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`Here, considering the factors, the Court finds that there is no dispute of material fact that
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`Bullard's use of SafeRack's mark created a high likelihood of confusion. SafeRack has a strong
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`mark. Indeed, these uses of color, whether orange for SafeRack, or yellow for another competitor,
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`is one of the only ways that companies differentiate themselves in an industry that is otherwise all
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`gray. (Dkt. No. 50-6 at 7; 50-26.) Furthermore, there is no material dispute that the marks are
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`incredibly similar, used on exceptionally similar equipment, that both SafeRack and Bullard
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`operate in a specific marketplace and that Bullard uses the same facilities and methods of
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`advertising when selling its safe access and fall protection equipment.
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`The Court is cognizant that there is only limited evidence of actual confusion since
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`Bullard's marketing of the challenged product was limited. However, Bullard has identified no
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`admissible evidence rebutting this record evidence. Moreover, while the fact that Bullard never
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`11 SafeRack also relied on survey evidence from Dr. Eli Seggev. As noted above, the Court held
`that Dr. Seggev's opinions are inadmissible under Fed. R. Evid. 702, and therefore the Court does
`not consider the survey or Dr. Seggev's opinions on summary judgment. Fed. R. Civ. P. 56.
`Additionally, even if Dr. Seggev's survey was admissible, which it is not, it would be irrelevant to
`confusion surrounding the MAP as he only surveyed usage of orange on certain railings of a
`gangway used for loading train cars, and not on the use of the MAP.
`
`12 Bullard allegedly disputes Mr. Hansen's testimony regarding his confusion at the 2017 IL TA,
`however Bullard focuses exclusively on Mr. Hansen's testimony from elsewhere in his deposition
`regarding Bullard's use of orange on the MAP, equipment not at issue here. (Dkt. Nos. 57 at 9;
`57-4 at 37 - 40.)
`
`13 The Court notes that no evidence has been submitted showing any actual confusion in connection
`with Bullard's sale of the MAP with an orange vehicle base
`
`-13-
`
`

`

`2:17-cv-01613-RMG Date Filed 11/28/18 Entry Number 65 Page 14 of 23
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`sold these items and only displayed them at a single tradeshow may serve to limit SafeRack's
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`damages, Bullard's reticence to sell infringing items and create opportunities for actual confusion
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`cannot be used as a shield when the likelihood of confusion is apparent. In sum, there is no dispute
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`of material fact that Bullard's use of the orange mark created a likelihood of confusion. 14
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`Therefore, the Court concludes that there is no dispute of material fact that SafeRack has
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`ownership of an orange color mark on railings, gates, and cages of fall protection equipment, that
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`Bullard used the mark in commerce without authorization when it advertised its safe access and
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`loading equipment with orange railings, gates and cages at the 2017 IL TA, and that this use was
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`likely to cause confusion.
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`E. Bullard's Defenses
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`Bullard presents six defenses to SafeRack's allegations of trademark infringement: the
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`orange color was functional, fair use, SafeRack' s mark was not distinctive for all shades of orange