Paying Deerely for a Paint Job

Paying Deerely for a Paint Job by Mark KaufmanIn a recent trademark dispute over trade dress and color, the Western District of Kentucky found that a medium-sized agricultural equipment company violated John Deere and Company’s exclusive right to use yellow and green on farm machinery. This is going farther afield (pun intended) than what we normally see in New York, but it’s an interesting case because it’s very difficult to establish a trademark in colors.

Defendant FIMCO’s business is primarily in the lawn and garden sector, but it claims that it had always been partially in the agricultural sector and had historically used the same colors as Deere. The products in question are crop sprayers — Deere sells self-propelled models, and FIMCO sells drag-along models that can be towed by “any decent tractor.”

By definition, the Supreme Court has held that in order for a color to be trademarked, it has to acquire distinctiveness. There’s nothing about any color on its own that is distinctive. The District Court went through the eight factors that need to be weighed to determine if there’s a likelihood of confusion:

  1. Strength of the Senior Mark: Because other vendors of trailed agricultural equipment used green and yellow, the Court found that the color scheme was not likely to be the “hallmark” of Deere. So, that factor weighed in favor of defendant though only slightly.
  2. Relatedness of the Goods or Services: The relevant consumers (farmers) could buy their equipment from either plaintiff or defendant. So, the overlap of the goods — different types of agricultural equipment — weighed in favor of Deere.
  3. Similarity of the Marks: Even though defendant FIMCO’s equipment typically had the words “Ag Spray” or “Schaben” printed on it, and even though that addition somewhat distinguished the products, the overall impression was that FIMCO’s colors (green and yellow, with or without the additional words) was similar to Deere’s trademark. This weighed “strongly” in favor of Deere.
  4. Evidence of Actual Confusion: Unfortunately, defendant’s survey of relevant consumers provided “at least some evidence of actual confusion,” so that backfired in favor of Deere.
  5. Marketing Channels Used: The fact that twenty-four authorized Deere dealers also sell FIMCO equipment, showed that Deere and FIMCO’s marketing channels overlap.
  6. Likely Degree of Purchaser Care: Almost begrudgingly, the Court found that many customers looking to buy “trailed agricultural implements” had a high degree of care and sophistication, given the high cost of such equipment. So, that factor weighed in favor of FIMCO.
  7. The Intent of Defendant in Selecting the Mark: Although FIMCO knew of Deere’s colors, the Court did not find that FIMCO knew they were a protected mark or intended to cause confusion. Rather, witnesses testified that those buying the equipment often wanted their fleet of tractors and trailers to look good together, out there in the field. Without proof that FIMCO intended to cause confusion “this factor is neutral.”
  8. Likelihood of Expansion of the Product Lines: The fact that Deere and FIMCO already compete with each other in this niche market, even without Deere “expanding” the goods it offered for sale, weighed in favor of Deere.

This is probably the right decision for the right reasons, but even though the court balanced the elements carefully, it feels like the decision was pre-determined — possibly because Deere’s colorful farming equipment is ubiquitous in the Western District of Kentucky. For example, if most people spending $10,000-$20,000 are careful about which brand and product they’re buying, why isn’t the “Likely Degree of Purchaser Care” factor weighed “heavily” in defendant’s favor? And if FIMCO isn’t shown to have developed its colors with the requisite “intent,” that factor arguably should not be “neutral” but weigh in defendant’s favor. Notably, even if the factors were weighed “equally,” John Deere & Co. would have won — but to me, the court wanted to make sure that the relatively famous litigant would come out on top.

Another thing that is buried in the beginning of the case, which I found interesting, is that the defendant had tried to show a continuity of use dating back to an acquisition it made in the 1960s. The company they had purchased, they argued, had been using yellow and green. Unfortunately, they had no proof of early usage. The lesson there is: Take pictures of your products and show what you’re selling every year. If FIMCO could have shown a continuity of use dating back earlier, they might have been able to demonstrate that they were using the colors for a long time. Without such proof, they couldn’t demonstrate laches — that is, that after all that time of building a business, and plaintiff’s “delay” in bringing suit, granting judgment to John Deere & Co. would have been inequitable.

Mark Kaufman

Mark S. Kaufman
Kaufman & Kahn
kaufman@kaufmankahn.com

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