*1 THIS OPINION IS CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE ORANGE COMMUNICATIONS, INC.
Serial Nos. 74/107,141; 74/330,369; 74/390,769; 74/391,199
October 30, 1996
R. John Bartz of Bartz & Bartz, P.A. for Orange Communications, Inc.
Trademark Examining Attorney
Law Office 12
(Deborah Cohn, Managing Attorney)
Before Sams, Rice and Simms
Administrative Trademark Judges
Administrative Trademark Judge
Orange Communications, Inc. (applicant), a Minnesota corporation, has appealed from the final refusals of the Trademark Examining Attorney to register the asserted marks shown below on the Supplemental Register for coin-operated pay telephone and credit card operated pay telephones in Serial Nos. 74/107,141 and 74/330,369, and for pay telephone booths in Serial Nos. 74/390,769 and 74/391,199. [FN1] While these cases have not been consolidated, we have chosen to consider them together in one opinion because they raise the similar issue of functionality of color.
The Examining Attorney has refused registration on the Supplemental Register because the asserted marks are allegedly de jure functional and, as such, are not capable of identifying and distinguishing applicant's goods from those of others. With respect to three of the applications, the Examining Attorney argues that the color orange, which is assertedly commonly used on safety and emergency equipment because of its high visibility, functions to make more visible applicant's pay telephones. According to the Examining Attorney, this bright color serves the utilitarian function of making applicant's phones easier to see in public places and, at a distance, much more visible than a standard black phone. For pay telephones and booths, the Examining Attorney argues, the color orange, therefore, should not be allowed to be appropriated by any one manufacturer but should be available to all manufacturers of public telephones and telephone booths. According to the Examining Attorney, there is a public policy to keep the color orange in the public domain to satisfy the competitive need of others in the industry.
The Examining Attorney contends that public telephones and booths can be considered "safety" equipment because in a time of need a phone call may be critical to summon help and that if applicant were allowed to appropriate exclusively this color, competitors would be at a competitive disadvantage in producing similar devices.
The Examining Attorney has submitted numerous articles from the LEXIS/NEXIS research database which showed the common usage of "orange" as a safety color. The reason orange is used on safety goods is because it is a highly visible color. A highway worker wears an orange safety vest so that motorists can easily see the worker. Likewise, orange safety netting or fences are used because the goods can be seen from a distance. The use of orange on telephones also serves the purpose of making the phones highly visible. In the event of an emergency, or when an unsafe condition is present, the ability to summon help quickly can literally be the difference between life and death. A person who needs to find a telephone would be able to find an orange telephone more quickly than a standard black telephone. This is especially true if the surrounding area is dark, the weather is bad or the lighting is poor.
*2 Examining Attorney's appeal brief, 5, in Serial No. 74/330,369. [FN2]
The evidence of record relied on by the Examining Attorney shows that phones (apparently for the home or office) are produced in a variety of colors such as brown, neon, white, blue, pink, green, purple, red and yellow. With respect to orange-colored safety equipment, the excerpts from printed publications made of record by the Examining Attorney indicate that these products include safety vests, safety hats, safety patrol trucks, safety jackets, safety barrels, traffic cones, safety nets, safety flags, ropes and reflectors. It is the Examining Attorney's position that orange highway construction equipment is colored orange so that motorists are able to avoid highway workers and other construction obstacles in their paths. It appears to be the position of the Examining Attorney that this widespread use demonstrates the utility of the color orange for its visibility. (Applicant has acknowledged in its brief filed in connection with Serial No. 74/391,199, at p. 12, that orange may be required by some state laws for deer hunting vests, jackets and caps.) The Examining Attorney also points to an excerpt from an article appearing in the May 5, 1992 Chicago Tribune demonstrating at least one other use of an orange phone in a public place:
The stations are equipped with intercom loudspeakers, so operators don't need a commuter to pick up one of the orange phones to hear a disembodied voice give directions. [FN3]
Although the Examining Attorney has made no specific reference to it, a promotional brochure distributed to potential customers has been submitted by applicant in several of these cases. That brochure discusses the utilitarian aspects of the color orange for its pay telephone products. A portion of that brochure is reproduced below:
Orange PhoneTM already has patents granted on the Orange PhoneTM, as well as others applied for and pending.
Orange PhoneTM has trademarks for payphones on the colors orange, yellow, green and the United States colors, red, white and blue. Also on sales material, cabinets and signs describing use of fixed-rate long distance calling price within the continental U.S. or from outside countries calling back to the United States. For example: the color recognition, such as using orange on the cabinets or on signs, is a striking color that gets the attention of a prospective customer.
Phone companies such as Bell have used a plain brushed aluminum outdoor booth, which in many cases blends in with the buildings in the area, and the phone is hard to see by a passing motorist. The Orange PhoneTM booths are bright orange and stand out. They are highly visible by a passing motorist. Consequently, this would generate more customers and more revenue.
The Examining Attorney has raised similar arguments concerning functionality with respect to applicant's attempt to register the color yellow for pay telephone booths. However, the evidence presented by the Examining Attorney in that case is somewhat different. It includes excerpts from the Nexis database indicating that telephone call boxes along highways, in parks and on some college campuses are frequently painted yellow. The Examining Attorney argues that roadside call boxes and telephone booths serve the same purpose -- to house telephones. According to the Examining Attorney, the fact that yellow call boxes are in use serves to reinforce the showing of competitive need for the color yellow.
*3 Applicant, on the other hand, contends that its marks are capable of distinguishing its telephones and telephone booths from those of others. Applicant argues that the colors orange and yellow for its goods are non-functional colors in that they are not used as safety colors on these goods. According to applicant, the colors of its phones and booths are immaterial and there is no need for competitors to use these colors to compete effectively. Applicant states that no other makers of pay telephones or telephone booths have used these colors in connection with their goods. [FN4] Applicant also points to its ownership of registrations for the marks ORANGE PHONE and YELLOW PHONE for coin-operated pay telephones and credit card operated pay telephones, and argues that these registrations evidence the capability of orange- and yellow-colored pay telephones and booths to function as indicators of source for these goods. Finally, while applicant concedes that, in particular cases, color may be essential to a product's use, purpose, cost or quality, in the instant case the colors orange and yellow, according to applicant, are not essential to the utility of the phone and do not affect its cost. For example, applicant argues:
The colors orange and white [see drawing of mark, page 2, above] used in connection with pay telephone booths are non-functional. The colors orange and white do not make pay telephone booths work better or make them less expensive to manufacture. Orange and white pay telephone booths are not more desirable to consumers then [sic] pay telephone booths of other colors. Thus, there is no competitive need for other manufacturers to produce orange and white pay telephone booths in order to meet consumer demand. Additionally, there is not [sic] need to color pay telephone booths at all, and no other maker of pay telephones has used orange and white on its pay telephone booths...
... On the contrary, there cannot be recognized any function thereof apart from simply making appellant's product more attractive, marketable and identifiable. Moreover, there is no evidence which would indicate that competitors have a need to use appellant's orange and white color scheme to compete effectively. In other words, there is no competitive need for the colors orange and white within the pay telephone booth market. Manufacturers within the industry do not typically color their pay telephone booth products orange [or yellow]. The color orange [or yellow] has not become widely associated with pay telephone booths throughout the marketplace.
(Applicant's appeal brief in Serial No. 74/391, 199, p. 12).
Applicant also states that it has not advertised "that the color orange is essential to the use of appellant's pay telephone booths." Applicant's appeal brief in Serial No. 74/391.199. p. 11. In that case, applicant argued that the color orange for the shape of its phone booths does not necessarily make the phone booths easier to see than phone booths of any other color. Applicant's amendment, filed September 12, 1994, p. 3, in that case. Indeed, applicant has stated in its brief, p. 10, in that case that:
*4 The color orange would actually make the phone booth harder to see if located next to a [sic] orange colored building or wall or during sunrise and sunset hours.
Applicant maintains that there is no evidence which would indicate that competitors have a need to use applicant's orange color scheme to compete effectively. Applicant's amendment, filed December 16, 1993, p. 4, in that case. In connection with the first-filed application (Serial No. 74/107.141), applicant's attorney has made the following statements with respect to the purpose and function of the color orange for its pay telephones:
The only purpose of the color orange is to identify applicant as the source of its pay telephone goods and to distinguish them from goods of others...
The specimens also show that there is no competitive need for the color orange within the pay telephone market...
The orange color is added for the sole purpose of inducing sales, as the color orange is a striking color that attracts the attention of a prospective customer.
(Amendment, filed December 5, 1991, p. 2)
The shape and the orange color associated with Applicant's pay telephones have no connection with the function of the pay phone. To the contrary, the shape, color and arrangement thereof give the composite mark symmetry and balance...
The purpose of using the color orange in combination with the product shape of Applicant's goods is to someday accomplish the capacity of identifying the pay phone's source as Applicant. (Request for Reconsideration, filed June 30, 1995, p. 4)
Also, in this application, brief, p. 8, applicant contends:
Protection of color, size and shape of pay telephones does not prevent competitors from using the same color in combination with different sizes and shaped pay telephones.
A similar statement also appears in applicant's brief, pp. 2-3, in Serial No. 74/390, 769.
Finally, in connection with its attempt to register the color yellow in connection with yellow phone booths, applicant maintains:
Contrary to the trademark attorney's position, the color yellow is not essential to the use of appellant's phone booths nor does the color yellow applied to pay telephone booths serve a primarily utilitarian purpose. The color yellow would actually make the phone booth harder to see if located next to a yellow colored building or wall or during sunrise and sunset hours. In addition, appellant's mark is the combined colors and shape of its goods. Neither the size nor shape of appellant's pay telephone booths is functional. Appellant has not advertised nor suggested in the marketplace that its composite colors and design mark has any safety considerations. Protection of color, size and shape of pay telephone booths does not prevent competitors from using different colors in combination with different sizes and shaped pay telephone booths.
The colors yellow and white used in connection with pay telephone booths [FN5] is [sic] non-functional. The colors yellow and white do not make pay telephone booths work better or make them less expensive to manufacture. Yellow and white pay telephone booths are not more desirable to consumers than pay telephone booths of other colors. Thus, there is no competitive need for other manufacturers to produce yellow and white pay telephone booths in order to meet consumer demand.
*5 Application Serial No. 74/390, 769, appeal brief, p. 10
The Central issue in these cases is whether the specified colors are capable of functioning as trademarks for applicant's goods. The Examining Attorney urges that in determining this issue we must examine what purpose color serves on applicant's telephones and telephones booths.
The Supreme Court has recently held that, under appropriate circumstances, color may serve as a trademark. Qualitex Co. v. Jacobson Products Co., Inc., 115 S.Ct. 1300, 34 USPQ2d 1161, (1995). However, the Court recognized, at pp. 1163-1165, that there are situations where exclusive use of a color may place competitors at a significant disadvantage.
The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm's reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful produce feature...Although sometimes color plays an important role (unrelated to source identification) in making a product more desirable, sometimes it does not... The functionality doctrine thus protects competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features.
The question is, of course, whether there is a competitive need for color to remain available in the trade. If exclusive use permits one competitor to interfere with legitimate competition, then protection should not be afforded.
Our primary reviewing court, the Court of Appeals for the Federal Circuit, has also observed that the use of color, if it serves a primarily utilitarian purpose, cannot act as a trademark. In Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120 (1994), the Court noted that the right to protect a product feature serving as a source indicator is limited by the need to compete effectively. The Court also noted that de jure functionality does not involve inquiry into whether a particular feature is "essential" to compete at all (at 32 USPQ2d 1122-23, quoting from In re Bose Corp., 772 F.2d 866, 872, 227 USPQ 1, 6 (Fed. Cir. 1985)):
If the feature asserted to give a product distinctiveness is the best, or at least one, of a few superior designs for its de facto purpose, it follows that competition is hindered...[I]f the use of color on the applicant's goods serves a non-trademark purpose that hinders competition, the de jure functionality doctrine precludes trademark protection.
The Court explained that the inquiry must therefore revolve around the question of competitive fairness. The Court held that the color black as applied to outboard engines, while it did not make the engines perform better mechanically as engines, was a more desirable color for reasons of color compatibility as well as the ability of that color to make the engines appear smaller.
*6 In re Howard S. Leight and Associates, Inc., 39 USPQ2d 1058 (TTAB 1996), the Board had occasion to rule on the question of whether the color coral (or orange or reddish-orange used for earplugs for industrial use was a superior one. The Examining Attorney had argued that applicant's orange earplugs were more readily visible during safety checks. The Board held that applicant's mark was de jure functional.
It is clear from this record that brightly colored earplugs (or cords attached thereto) are more readily visible and that such visibility aids in monitoring for employee compliance with health and safety regulations. Thus, the bright color of applicant's earplugs is de jure functional...Applicant's coral earplugs, being closely akin to orange, the color most often used for high visibility, clearly serve to make safety checks easier and quicker.
Section 1212.04(e) of the Trademark Manual of Examining Procedure notes that registration of a color may be refused if there is a competitive need for the color to remain available in the industry. Such a proposed mark is considered functional and is not registrable on either the Principal or the Supplemental Registers.
A color may be functional if it serves a utilitarian purpose or yields a utilitarian or functional advantage, for example, yellow or orange for safety signs.
Upon careful consideration of this record, we agree with the Examining Attorney that the asserted marks are unregistrable because registration would put competitors at a substantial disadvantage in the marketplace. Applicant has conceded that, if there is a competitive need for a particular color, it may not be registrable. As we have observed, and contrary to applicant's assertions, color need not make a product function better mechanically or be less expensive to manufacture for it to be held de jure functional. See Brunswick Corp., supra. The Examining Attorney has presented a persuasive case that telephone cabinets or housings for public telephones as well as the phones themselves presented in either the colors orange or yellow would be demonstrably more visible than phones presented in almost any other color. Moreover, applicant, in its own product literature has touted the advantages achieved by the orange-colored phones.
The Orange PhoneTM booths are bright orange and stand out. They are highly visible by a passing motorist. Consequently, this would generate more customers and more revenue.
We believe that applicant's statement is an admission that the color orange (and also the highly visible color yellow) is a superior one because of its utility on applicant's telephone products. For a public convenience like a pay telephone, the presence of which may be made more apparent by its brightly colored appearance, color may serve a primarily utilitarian function or purpose. That is to say, an orange-colored public telephone and a yellow or orange phone booth are demonstrably easier to see under virtually all lighting conditions in the event of an emergency (or even when the presence of such a facility operates as a mere convenience). [FN6] This is not a case where the asserted mark is simply ornamental or more attractive. Rather, here the colors orange and yellow are performing a desirable function and competitors should be free to use them. Registration to applicant would affect the ability of competitors to compete because they would have to devise other means of making pay telephones and telephone booths more noticeable to the public. Because we agree with the Examining Attorney that a brightly colored orange pay telephone or booth or yellow phone booth would be more desirable to alert the general public to its presence, thereby "generat[ing] more customers and more revenue," and that registration to applicant of these colors as marks would thus substantially hinder competition, applicant's asserted marks are de jure functional and unregistrable.
*7 Decision: The refusal of registration is affirmed in each case.
J. D. Sams
J. E. Rice
R. L. Simms
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/107,141, filed October 19, 1990, based upon use in commerce since October 23, 1988. The application was amended to one seeking registration on the Supplemental Register on September 21, 1992. The drawing is said to be lined for the color orange. However, the lining used by applicant is no longer accepted lining for orange. See Trademark Rule 2.52(e).
Application Serial No. 74/330,369, filed November 12, 1992, amended to one seeking registration on the Supplemental Register on October 23, 1993. The drawing is lined for the color orange. This application claims use since July 1988 and use in commerce since October 23, 1988. Although applicant originally described its mark as "the orange color of pay telephones," during the prosecution of the application, applicant submitted the following description of its asserted mark:
The mark consists of the color orange on part of the outer surface of a pay telephone cabinet and a black colored handset having an orange colored vertical, rectangular stripe on the back of the telephone handset.
Applicant also submitted a disclaimer of any exclusive right to the use of the design of the pay telephone. In the application applicant claimed ownership of Registration No. 1,668,306, issued December 17, 1991, for the mark ORANGE PHONE for coin-operated and credit card operated pay telephones.
Application Serial No. 74/390, 769, filed May 17, 1993, based upon use in commerce since June 1, 1991, amended to one seeking registration on the Supplemental Register on March 24, 1994. The drawing is said to be lined for the color yellow but is actually lined for the color orange. See Trademark Rule 2.52(e). However, we have treated the mark as being lined for the color yellow. While the original application described the mark as "a pay telephone booth having the color yellow," applicant subsequently amended its mark to read:
The mark consists of a yellow pay telephone booth with upright flat side walls and a horizontal bottom wall and a white front wall.
Application Serial No. 74/391,199, filed May 17, 1993, based on use since April 15, 1989. The application was amended to one seeking registration on the Supplemental Register on December 16, 1993. This mark is said to be lined for the color orange but is really lined for the color yellow. However, we have treated this mark as being lined for the color orange. If applicant is eventually found entitled to registration of any of the marks for which incorrect drawings have been submitted, applicant should submit amended drawings as indicated.
With respect to this application and application Serial No. 74/107,141 noted above, there is an additional issue: Whether applicant's amendment to its mark or to the description of its mark to include the design of applicant's pay telephone or the shape of the telephone booth as a part of its mark is a material alteration. In this regard, during the prosecution of these two applications, applicant indicated that it was not claiming the design or shape of its telephone or telephone booths as parts of its marks. At the same time, applicant submitted drawings showing portions of applicant's telephone and the phone booth outlined in broken or dotted lines. Applicant then amended the drawing of its mark and the description of its mark. It is the Examining Attorney's position that the marks in both cases are the color orange alone and that it would be a material alteration under Trademark Rule 2.72 to change the marks to include matter (shape) specifically excluded by applicant during the course of the prosecution of its applications. That is to say, applicant is now apparently claiming as a part of its marks what applicant had earlier said was not part of its marks. The Examining Attorney argues that, as a result of applicant's previously submitted amendments, the public had been placed on notice as to what applicant was claiming and that applicant should not now be permitted to change this claim. We believe the Examining Attorney's position in this regard is correct. See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991). Compare In re ECCS Inc., ___ F.2d ___, 39 USPQ2d 2001 (Fed. Cir. 1996). However, we point out that we would reach the same result in these cases on the issue of functionality even if applicant's marks were considered to consist of the design or shape of the orange pay telephone and the orange telephone booth.
FN2. As a separate reason for refusal in Serial No. 74/330,369, the Examining Attorney argues that, even if the Board should find that applicant's asserted mark is not functional, registration should be refused because of the so-called "color depletion rule." Referring to the evidence of record showing that it is common to sell telephones in a wide variety of colors, the Examining Attorney argues that to allow applicant to take one color out of an industry which clearly depends on color for other than trademark function would violate this rule. In this regard, see the discussion of the color depletion argument in Qualitex Co. v. Jacobson Products Co., Inc., 115 S.Ct. 1300, 34 USPQ2d 1161, 1165 (1995). With respect to most of the Nexis excerpts made of record in these cases, it appears that this evidence relates to colored home or office phones and not to colored pay or public phones and phone booths.
The yellow phones, the first of which is already in place near the corner of Channing way and Piedmont Avenue, will give callers a direct line to university or city police.
(The San Francisco Chronicle, February 20, 1992).
FN4. However, in his brief in Serial No. 74/330, 369, p. 11, and elsewhere. applicant's counsel states that:
Manufacturers within the industry do not typically color their pay telephone products orange. The color orange has not become widely associated with pay telephones throughout the marketplace.
FN5. Although applicant's drawing shows a white plate above the opening of this phone booth, applicant's specimens in this application show that this part is actually blue and has the word "phone" printed thereon. Therefore, applicant does not actually use the colors yellow and white on its phone booths.
FN6. One can envision the situation, for example, of a college or university administrator whose duty it has become to increase campus security in all respects. We believe that such an administrator, faced with the choice of selecting a brightly colored orange pay telephone or one in a less visible color, would select the product which is immediately more recognizable. Competitors who would be precluded by a registration from producing a similar telephone would be at a competitive disadvantage.