Metropolitan News-Enterprise


Wednesday, June 6, 2018


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Ninth Circuit:

Jury Must Decide Whether Green Color On Ear Plugs Is Protectible Trademark


By a MetNews Staff Writer


It’s a jury question whether the bright green color of a particular brand of ear plugs is functional, so as to preclude trademark protection, the Ninth U.S. Circuit Court of Appeals held yesterday.

For the second time, it reversed summary judgment in favor of defendant McKeon Products, Inc., which in 2009 began selling “Snoreblocker” ear plugs which have a bright green color. That prompted an action for infringement of its unregistered trademark by Moldex-Metric, Inc., which since 1982 has been making “Pura-Fit” earplugs in that same color.

District Court Judge George King of the Central District of California first awarded summary judgment to the defendant in 2013. The Ninth Circuit in 2015 reversed in a 2-1 opinion, holding that King did not adequately consider the U.S. Supreme Court’s 1995 decision in Qualitex Co. v. Jacobsen Products, Co.

There, it was held that a color be subject to trademark protection, even if it has some functionality, so long as the color is not “is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.”

Majority Opinion

The Ninth Circuit’s majority--comprised of Judges Consuelo Callahan and John B. Owens--said in the 2015 opinion:

“Although we doubt summary judgment on functionality grounds would be appropriate in this case, we leave it to the district court to assess functionality in light of Qualitex in the first instance.”

Judge Paul J. Watford  dissented, saying that King applied a Ninth Circuit case that expanded upon Qualitex.

‘Special Care’

King in 2016 again awarded summary judgment to McKeon, saying he was taking “special care” to discuss “essentiality.” He wrote:

“Moldex’s own evidence shows that the Green Color Mark’s color is ‘necessarily better in conspicuity and visibility than several, if not most, other colors.’…Such evidence shows that the Green Color Mark’s color has an inherent attribute--its increased visibility--that contributes to an aspect of the intended operation of Moldex’s ear plugs--to facilitate compliance checks. The evidence also shows that this contribution is significant to the ear plugs’ operation, as Moldex specifically markets the benefits of the ear plugs’ visibility to consumers….In sum, by virtue of the Green Color Mark being the color it is, Moldex’s ear plugs work as they are supposed to.”

King continued:

“That some other colors--such as bright yellow or bright orange--may possess the same beneficial visibility attributes that make the Green Color Mark essential to Moldex’s ear plugs does not defeat that essentiality. The Green Color Mark’s color still contains an enhanced visibility attribute that not all other colors have. This attribute significantly contributes to the ear plugs’ operation, allowing them to work as intended. This holds true even if some other colors might also provide similar enhanced visibility. Thus, the essentiality of the Green Color Mark’s green to Moldex’s ear plugs exists regardless of the existence or non-existence of design alternatives.”

Yesterday’s opinion reversing King was authored by District Court Judge Lawrence L. Piersol of the District of South Dakota, sitting by designation. He was joined by Circuit Judges Kim McLane Wardlaw and Ronald M. Gould.

King erred, Piersol said, in concluding that the availability of other colors to perform the same function was irrelevant to functionality. Under case law, he declared, “the  existence or nonexistence of alternative designs” is “probative  evidence of functionality or nonfunctionality.”

Evidence that other colors enhance visibility, the visiting jurist said, “weighs against a finding of functionality.” Piersol said a jury must make the call, explaining:

“Because a reasonable jury could find…that the evidence of alternative colors outweighs the evidence of Moldex’s color providing some utilitarian advantage, and the fact Moldex advertised its utility, and a reasonable jury could then find… that trademark protection of the color would not impose a significant non-reputation-related competitive disadvantage, there remains a dispute of material fact as to whether Moldex’s bright green color is functional. Therefore, summary judgment on functionality was inappropriate.”

The case is Moldex-Metric v. McKeon Products, No. 16-55548.


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