Saint-Gobain Corporation v. 3M Company

THIS OPINION IS A

PRECEDENT OF THE TTAB

Hearing: Mailed:

14 September 2006 31 August 2007

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

Saint-Gobain Corporation

v.

3M Company1

_____

Opposition No. 91119166

to application Serial No. 75488524

_____

Roberta Jacobs-Meadway of Ballard Spahr Andrews & Ingersoll,

LLP for Saint-Gobain Corporation.

Roberta L. Horton of Arnold & Porter LLP for 3M Company.

______

Before Hairston, Grendel, and Drost, Administrative

Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 18, 1998, 3M Company (applicant or 3M) filed an

application to register a mark described as follows on the

Principal Register:

The mark consists of a distinctive purple color as

applied to the entirety of [the] rough side of the

goods. The mark is lined for the color purple and

color is claimed as the mark. The dotted lines merely

indicate the position of the mark on the goods and do

not form part of the mark.

1

Applicant was originally identified as Minnesota Mining and

Manufacturing Company a/k/a 3M Company. As a result of an

assignment document recorded April 30, 2002, applicant’s name was

changed to 3M Company. Reel and Frame No. 2502/0547.

Opposition No. 91119166

The goods were identified as “sandpaper” in Class 3 and the

mark in the drawing appeared as follows:

The application (Serial No. 75488524) contained dates of

first use anywhere and in commerce of 1989. In addition to

claiming that the mark was inherently distinctive, the

application also contained an alternative claim that the

mark had acquired distinctiveness under Section 2(f) of the

Trademark Act. 15 U.S.C. § 1052(f).

The application was published for opposition on January

4, 2000, with a claim of distinctiveness under Section 2(f)

and with this additional sentence added to the description

of the mark: “The stippling in the mark shows the texture

of the goods and does not represent color.”

On May 1, 2000, Saint-Gobain Corporation (opposer or

SG) filed a notice of opposition. In the notice of

opposition, opposer alleged that its subsidiaries used the

color purple on abrasives prior to applicant, that the color

of the product functions as an indicator of abrasive grit

size, and that applicant’s mark has not acquired

distinctiveness. Applicant has denied the salient

allegations of the Notice of Opposition. After extensive

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discovery and trial periods, an oral hearing was held on

September 14, 2006.

The Record

The parties agree that the record as set out by opposer

in its brief on pages 4 and 5 is accurate. Applicant adds

that opposer did not mention its motion for summary judgment

that was denied, and judgment sua sponte was entered for

applicant on the issue of whether applicant was seeking to

register multiple marks. We add that the parties submitted

more than sixty depositions from more than thirty-five

different witnesses.

Amendments

On December 18, 2000, applicant moved to amend the

description of the mark to the following:

The mark consists of a distinctive purple color as

applied to the entirety of [the] rough side of the

goods, specifically, a shade of purple represented by a

hue angle of approximately 285° as measured by the X-

Rite SP62 portable spherical spectrometer with an

observer angle of 10° and with an illuminant equal to

F2 which represents cool fluorescent lighting. The

mark is lined for the color purple and color is claimed

as the mark. The dotted lines merely indicate the

position of the mark on the goods and do not form part

of the mark.

Opposer’s color expert witness testified that:

In order to investigate whether the 3M definition

captures Saint-Gobain’s current products, it is

necessary to choose a tolerance for indicating the

limits within which a color is “approximately” at a hue

angle of 285. As discussed in Section 2.1 above, the

most scientifically accepted method for specifying

color tolerances is in terms of ΔΕ*, but for hue angle

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Opposition No. 91119166

alone, this is not possible. So, for these purposes

±5% of possible hue angles was chosen as tolerance.

18° + 5% x 360°

This interpretation of the 3M definition finds any hue

angle that is 285° ±18° to be approximately 285°.

Using this conservative reading of the 3M definition, 8

of the Saint-Gobain products, nearly 30% of those

tested, were found to fall within it.

Rosen dep. Ex. 81, p. 8.

On April 30, 2001, applicant filed another motion to

amend the application. This time applicant sought to amend

the identification of goods from “sandpaper” to “sandpaper,

namely, coated abrasives with either paper or cloth

backing.”

On November 6, 2003, the board, in a decision on

opposer’s motion for summary judgment, granted applicant’s

motion to amend the description of the mark as conceded but

deferred a decision on applicant’s motion to amend the

identification of goods until final decision.

On March 3, 2005, applicant filed a third motion to

amend its application/second motion to amend the description

of the mark. The new amendment sought to amend the

description of the mark to add the language set out in

italics below:

The mark consists of a distinctive purple color as

applied to the entirety of [the] rough side of the

goods, specifically, a shade of purple represented by a

hue angle of approximately 285° with a lightness

measurement of 36 and a saturation measurement of 22 as

measured by the X-Rite SP62 portable spherical

spectrometer with an observer angle of 10° and with an

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Opposition No. 91119166

illuminant equal to F2 which represents cool

fluorescent lighting. The mark is lined for the color

purple and color is claimed as the mark. The dotted

lines merely indicate the position of the mark on the

goods and do not form part of the mark.

Opposer has opposed these amendments to applicant’s

identification of goods and description of its mark.

Regarding the third amendment to the application and

the second to the description of the mark, opposer argues

that “the description matches almost none of the products

sold by 3M, and 3M can not rely on its sales of non-matching

products to establish distinctiveness of the color as

described” in the amendment. Brief at 2-3.

Applicant responds by arguing (brief at 34-35) that:

[T]he fact that 3M’s internal color measurement

guidelines and its proposed third amendment do not

match up with absolute precision is immaterial. This

naturally is going to be the case because Applicant’s

internal 3M Purple measurement guidelines contain

slight tolerances (i.e., ranges), necessary in any real

world manufacturing process, for what it considers to

be an acceptable rendition of the 3M Purple mark –

tolerances that 3M could not reflect in its application

without (again) being accused of seeking to register

multiple trademarks.

Applicant also admitted (Brief at 32) that “these amendments

[to the description of the mark] which SG now seizes upon in

arguing that 3M Purple is inconsistently defined – are not

necessary to issuance of the registration that 3M seeks.

The simple fact remains that the color 3M seeks to register

appears on the very face of the specimen.” See also Rowen

dep. at 23 (“The deep purple color that we were seeking to

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Opposition No. 91119166

register as indicated by the sample that we submitted is a

particular color, not a range of colors”). However, we note

that the “drawing depicts the mark sought to be registered.”

37 CFR § 2.52.

In this case, the board has already determined that

“applicant has restricted the mark to a single, clearly

defined shade of purple, and that the description, as

amended, will govern applicant’s rights. Applicant’s

sandpaper in other shades of purple is outside the purview

of the involved application.” Decision on Summary Judgment

dated November 6, 2003 at 5 (citation omitted). We do not

find that this third amendment in the case and second

amendment to the description of the mark clarifies the

issues in this case; rather it has led to more confusion.

Applicant, itself, admits that it is unnecessary, and

therefore, we deny the second amendment to the description

of the mark (third amendment to the application).2

Turning next to applicant’s motion to amend its

identification of goods, we note that its goods were

2

Hopefully, cases like this, in which considerable effort is

expended trying to describe the specific color of the mark, are

headed for extinction. Current USPTO rules now require that if

“the mark includes color, the drawing must show the mark in

color, and the applicant must name the color(s), describe where

the color(s) appear on the mark, and submit a claim that the

color(s) is a feature of the mark.” 37 CFR 2.52(b)(1) (emphasis

added). See also TMEP § 807.07(a)(1) (4th ed. April 2005) (“For

applications filed on or after November 2, 2003, the Office does

not accept black and white drawings with a color claim, or

drawings that show color by use of lining patterns”).

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Opposition No. 91119166

originally identified simply as “sandpaper.” Applicant now

seeks to narrow or clarify its goods by adding the phrase

“namely, coated abrasives with either paper or cloth

backing.” Opposer argues that the motion to amend is

insufficient, because applicant has not consented to

judgment with respect to all the removed goods; it has not

made a showing that the amendment changes the nature and

character of the goods; and it is a commercially

insignificant distinction. Opposition to Motion at 5-6.

In response, applicant submitted the following entry

from The New Encyclopedia Britannica “sandpapers (coated

abrasives) are the next most significant abrasive product

[after the grinding wheel]. They consist, basically, of a

single layer of abrasive particles held to a flexible

backing material. Manufacture begins with huge rolls of

backing material, either paper, cloth, or a combination of

the two.” Applicant submits that the amendment was a

clarification and not a limitation of the identification of

goods. Opposer’s witness (its former business manager and

technical advisor) pointed out that the term “sandpaper” is

an “outdated” term. R. Herron dep. dated April 10, 2001 at

26 (“Sandpaper is an outdated term. It’s a slang for coated

abrasives… It is still used sometimes interchangeably with

coated abrasives. It’s just an old term back from the days

when people used to make abrasives by taking a piece of

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Opposition No. 91119166

paper and throwing a little glue on it and throwing some

sand on the surface”). Because applicant’s amendment to its

identification of goods is a clarification (37 CFR

§ 2.71(a)) that helps narrow the issues at trial, it is

appropriate that we grant the motion to amend applicant’s

identification of goods.

Standing

Opposer’s evidence of its use, by itself or through its

subsidiaries, of various colors on coated abrasives

establishes its standing to oppose this application.

It is recognized that a party need not be a

manufacturer or seller of the goods in connection with

which a descriptive, misdescriptive, or merely

ornamental designation is used in order to object to

the registration thereof. It is sufficient that the

party objecting to such registration be engaged in the

manufacture and/or sale of the same or related goods

and that the product in question be one that could be

produced in the normal expansion of that person's

business. If the designation in question is found to

be merely descriptive, merely ornamental or the like,

damage is presumed since a registration thereof with

the statutory presumptions afforded the registration

would be inconsistent with the right of another person

to use these designations or designs in connection with

the same or similar goods as it would have the right to

do when and if it so chooses… Thus, opposer as a

competitor of applicant is a proper party to challenge

applicant's right of registration.

Federal Glass Co. v. Corning Glass Works, 162 USPQ 279, 282-

83 (TTAB 1969). See also 3 McCarthy on Trademarks and

Unfair Competition, § 20:11 (4th ed. 2007) (“Standing to

oppose is presumed when the mark sought to be registered is

allegedly descriptive of the goods and the opposer is one

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Opposition No. 91119166

who has a sufficient interest in using the descriptive term

in his business”).

Issues

We start by pointing out that this case involves an

application in which applicant seeks to register a shade of

purple for coated abrasives under the provision of Section

2(f) of the Trademark Act. The opposition to registration

is based on opposer’s claims that applicant’s mark has not

acquired distinctiveness and that the color is functional

and, therefore, is not registrable.

Acquired Distinctiveness

We will begin by discussing the issue of acquired

distinctiveness, which presents a better vehicle for setting

out the evidence in the case, although the facts here are

also often relevant to the functionality issue. As we will

explain below, we find that applicant’s mark has not

acquired distinctiveness.

We note that applicant is seeking the registration of

“a distinctive purple color.” Applicant refers to the color

as “deep purple.” Applicant’s Brief at 1, 3, and 5.

Eleven years after its asserted date of first use, applicant

set out guidelines for the use of this purple color. 3M did

not establish guidelines for the use of its deep purple

abrasive products until approximately December 2000. Rowen

dep. at 8 (“I was responsible for documenting and developing

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Opposition No. 91119166

guidelines around management of the Purple brand and

communicating that within our organization. Q. Around what

time period was this? A. Late 2000. I think the documents

were published in December”). Even with the guidelines in

place, the appearance of applicant’s color on its goods has

not been universally consistent.

Q. I am going to show you what’s been already

previously marked as Doeksen Exhibit 29, and ask you

can you identify that?

A. It appears to be a sample of 961UZ.

Q. Is that the shade of purple that according to your

understanding 3M is seeking to register?

A. Yes.

Rowen dep. at 8 (emphasis added).

Q. Directing your attention to Rowen Deposition Exhibit

7, sir, does that include the claim on the back that

the color purple is a trademark of 3M?

A. Most of it

Q. Now, I would like you to compare Rowen Exhibit 7

with Doeksen Exhibit 29, which your counsel showed you

previously. Visually, sir, are these products the

same?

A. No, there are some differences.

Q. What are the differences visually between Doeksen

Exhibit 29 and Rowen Exhibit 7, sir?

A. The backing and the backing color are different. It

appears much lighter in color.

Q. What appears much lighter in color, sir?

A. The face surface of the abrasive…

Q. Does it appear visually different?

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Opposition No. 91119166

A. Yes, it does.

Rowen dep. at 39-40 (emphasis added). See also Rowen Ex. 8.

Background:

At this point, it would be helpful to provide some

background on abrasives. “Abrasives are materials that

remove other materials.” R. Herron dep. dated March 29,

2005 at 20. “There is almost nothing that doesn’t require

abrasives at one point in the operation.” R. Herron dep.

dated March 29, 2005 at 21.

Fortunately, there is a document of record published by

the Coated Abrasives Manufacturers’ Institute (CAMI),3 a

brochure entitled “Coated Abrasives: Modern Tool of

Industry – A Series of Application and Informational

Brochures,” which explains the making and use of coated

abrasives. R. Herron dep. dated March 29, 2005 Ex. 1

(“Coated Abrasives”). Both applicant and the Norton Company

(opposer’s subsidiary) are identified as members of CAMI.

Id.

Abrasives are often referred to as “coated” or “bonded”

abrasives. Coated abrasives consist of:

abrasive particles, or grains, fastened to a flexible

backing by a film or adhesive… Backings might be film,

paper, cloth, fiber, or a combination of these

materials. The bonding agents, or adhesives, can be

any number of different glues and resins. And the

abrasive grains in general use today range from natural

and synthetic minerals such as emery, garnet and crocus

3

CAMI is now apparently the UAMA. Herrin dep. dated March 29,

2005 at 32 (United Abrasives Manufacturers’ Association).

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Opposition No. 91119166

through aluminum oxide, silicon carbide and the new

zirconia alumina and ceramic alumina abrasive

combinations.

Coated Abrasives at 2, R. Herron, Ex. 1.

Thus, a coated abrasive consists of a backing material,

a bonding agent, and an abrasive grain. In addition, the

CAMI brochure refers to another abrasive product called

“nonwoven” or “non woven” abrasives. “Non woven synthetic

fabrics as coated abrasive backings came onto the scene in

the mid-1970s… Today’s upgraded versions have found some use

in certain specific applications, particularly in finishing

applications. Coated abrasive products featuring non-woven

backings are available in a variety of shapes, forms and

sizes including belts for both metal and woodworking

markets.” Coated Abrasives at 9, R. Herron, Ex. 1.4

“Coated abrasives” are distinguished from “bonded

abrasives.” With bonded abrasives, the abrasives’ grains

are “bonded together to form the actual product shape, as is

a bonded abrasive wheel,” while coated abrasives are coated

to a surface. Coated Abrasives at 2, R. Herron, Ex. 1. See

also R. Herron dep. of March 29, 2005 at 22 (“The primary

4

We note that the witnesses differed as to whether nonwoven

abrasives are a type of abrasive distinct from coated abrasives.

See, e.g., Kelly dep. dated June 10, 2005 at 74 (“Is that a

coated abrasive product? A. No. Q. What is it, do you know? A.

Nonwoven abrasive product in the Scotch Brite family of products

is how I know it”); R. Herron dep. dated March 29, 2005 at 22

(“[S]ometimes nonwovens are talked about as a separate business

unit”); and R. Herron dep. dated March 29, 2005 at 28 (Nonwoven

abrasives are “definitely” coated abrasives).

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Opposition No. 91119166

difference between the two is that coated abrasives are

conformable so if you need an abrasive product that will

conform to a surface you pretty much have to use a coated

abrasive material. That’s because of the flexible nature of

the backing. Bonded abrasives can be shaped but will not

deform or shape on their own”).

Coated abrasives are distinguished, inter alia, by

whether the coated abrasive is a “closed” or “open” coat.

“In a closed coat product, the coat side surface of the

backing is completely covered with abrasive grain… An open

coated product has the abrasive grains spaced at

predetermined distances apart from one another, covering

approximately 50% to 70% of the coated surfaces.” Coated

Abrasives at 21-22, R. Herron, Ex. 1.

“In addition to the type of abrasive used, grit size is

another variable. Coated abrasives are made in a wide range

of grits ranging from the very rough and coarse grit to very

fine micron and sub micron sizes.” Coated Abrasives at 2,

R. Herron, Ex. 1.

The abrasives used in producing coated abrasives come

in a variety of colors.

Aluminum oxide – “Depending on the titanium content, it

ranges in color from white to dark brown… It is

particularly well adapted to high tensile materials

such as carbon and alloy steels, tough bronze, and hard

woods.” When the common additives, titanium dioxide

and chromium dioxide are used the grains are “black or

pink in color.” Coated Abrasives at 17, R. Herron,

Ex. 1.

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Opposition No. 91119166

Silicon Carbide – it “is bluish black in color.” It

“is ideal for sanding, polishing, and finishing non-

ferrous metals (aluminum, brass, bronze, magnesium,

titanium, etc.) as well as glass, rubber, plastics,

fibrous woods, enamel and other low tensile, relatively

soft materials.” Coated Abrasives at 17, R. Herron,

Ex. 1.

Garnet – “For use as coated abrasives, the reddish-

brown grains are crushed and specially treated with

heat to become tougher and sturdier… It is widely used

in furniture manufacturing, particularly in finishing

operations.” Coated Abrasives at 18, R. Herron, Ex. 1.

Emery – “a natural composite of corundum and iron

oxide, emery is very dark gray in color… Emery is used

for general maintenance and metal polishing, and in

very fine grits, for highly technical polishing where

close tolerances are essential.” Coated Abrasives at

18-19, R. Herron, Ex. 1.

Crocus – It “forms the basis for the well known rouge

used in many fine polishing and buffing operations and

is used in the jewelry trade and markets where gold and

other soft rare metals are polished.” Coated Abrasives

at 19, R. Herron, Ex. 1.

Applicant’s 3M™ Floor Sanding, Finishing, Installation

and Repair Products brochure also indicates that abrasives

come in several natural colors:

Understanding Coated Abrasives

There are 4 basic types of minerals used to make

abrasives for the paint and construction industry;

garnet, aluminum oxide, silicon carbide and ceramic

aluminum oxide.

Garnet – A natural, reddish brown mineral…

Silicon Carbide - Very hard, black and shiny…

Aluminum Oxide - A synthetic mineral, gray-brown in

color…

Zelgart dep. Ex. 27.

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Opposition No. 91119166

Facts:

Abrasives come in a variety of colors. The displays in

several manufacturers’ catalogs of record show different

abrasives in a rainbow of colors. Standard Abrasives 2000,

Kelly dep. Ex. 14 and 15 (Pictures of different color

abrasives). See, e.g., Lynn Ex. 7 (Mercer Abrasives –

“These blue, cloth-backed abrasives last up to four times as

long as conventional flooring products”); Kelley dep. dated

June 10, 2005 at 70 (Purple bonded-type abrasives); and R.

Herron dep. dated March 29, 2005, Ex. 40 (Norton Stock

Abrasive Products catalog showing a variety of abrasives in

numerous colors).

Q. Okay. And you got – and MIPOX [a third-party

abrasive manufacturer] does make coated abrasives in

different colors.

A. Yes, we do.

Q. Okay. Have you seen any other companies that make

different color-coated abrasives like you, for example,

at a trade show or something like that?

A. Yes, I have seen other competitors making abrasive

films in different colors.

Q. Okay. Do you know what colors you’ve seen?

A. Just off the top of my head, I have seen colors in

the blue, purple, reddish, greenish color…

Kodaka dep. dated April 20, 2005 at 10.

Coated abrasives, including paper and cloth coated

abrasives, come in a variety of colors. Turner dep. at 27

(“Blue, red, reddish, black, light blue, gold”); Kelly dep.

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Opposition No. 91119166

at 68, Ex. 14, p. 17 (Different color Resin Fibre Discs,

included purplish blue, for coated abrasives); Kelley dep.

dated June 10, 2005 at 41 (Coated abrasives come in many

colors); Kelly Ex. 15 (Shur-Kut Catalog – different color

abrasives); and Kodaka dep. dated April 20, 2005 at 9:

Does MIPOX sell coated abrasives in different colors?

A. Yes, we do.

Q. And do you know which colors you sell or –

A. In general we sell all the major color types: blue,

green, yellow, brown, purple, red.

Purple is one of the colors that is used in association

with coated abrasives including paper and cloth coated

abrasives. R. Herron dep. dated March 29, 2005 at 88-90

(R215/R255 [identical to R228 except that is a closed coat]

is an “open coated aluminum oxide cloth belt.” It is a

coated abrasive that has been sold by opposer or its

predecessor since long before the witness came to the

company. It looks purplish. It “dates back to the

fifties.” This open coat sample “is aimed primarily in the

woodworking market”). See also Sternberg dep. at 21, Ex.

115 (Purple film-backed coated abrasives have been used in

the dental industry); Kodaka dep. dated April 20, 2005 at 11

(“What products do you make that are purple? A. We have

three main products. We have one coated abrasive that has

aluminum particles in it; we have another one that has

diamond particles in it; and we have a third one that has

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Opposition No. 91119166

silicon carbide particles”). See also Sternberg dep. dated

April 7, 2005 at 14-16:

Q. Okay. Has Moyco [Moyco Technologies - a third-party

abrasive manufacturer] during the course of doing

business ever made purple-colored coated abrasives?

A. Yes.

Q. Okay. And how long have they been making purple

color abrasives?

A. Since I’ve been there… I can say without question

since ’74…

Q. The purple coated abrasives that you are familiar

with that Moyco made, can you tell me what kind of

backings those had?

A. Film backing and paper backing…

Q. And did you sell purple coated abrasives in

commercial quantities?

A. Yes

See also Sternberg dep. dated April 7, 2005 at 23 and

Ex. 121 (Describing Exhibit 121 as “purple, a paper backing,

probably went into the beauty industry”) and 27-28 and Ex.

134 (Describing Exhibit 134 as “Paper backed, aluminum

oxide, Moyco product, was made for a long time, we still are

making it, and are commercially selling it. And I would

believe this would also have gone into the beauty

industry”).

Opposer was selling its product identified as R228

since at least 1967. R. Herron dep. dated March 29, 2005 at

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Opposition No. 91119166

74 (“[I]n my mind it’s very clearly purple,5 [and] they were

selling it before I joined the company in 1967”). See also

R. Herron dep. dated March 29, 2005 at 77-78 and Ex. 106

(“That’s the special made depilatory product for removing

hair –- for removing hair from women’s and hairy men’s I

guess arms and legs. It is the purple material.” It has

been sold since before 1967); and Sternberg dep. at 18-20

(Ex. 111-114 and 121, purple paper coated abrasives).

5

It is clear from reviewing the examples of abrasives in the

record and the various witnesses’ description of their colors

that there is a great deal of subjectivity in the witnesses’

characterization of these colors. We have no doubt that some of

these products can be identified in various ways. Opposer’s

color expert testified that “a color name is a very personal – is

a very personal thing.” Rosen dep. at 55. Testifying as a

layman, in response to a question on cross-examination, Dr. Rosen

agreed that SG’s sample Q135 could be described as “a very light

purple or a lavender.” Rosen dep. at 52. In its Reply Brief at

22 (citations to record omitted), opposer points out that the

color of the products can be described in various ways:

3M states that SG’s witness, Mr. Herrin, called the SG T247

“black.” In fact, Mr. Herrin stated: “I could say it’s

black. You can say it’s a dark shadow [sic] of purple.

There is a variety you would say with it.” Further

misrepresentation of Mr. Herrin’s testimony occurs where 3M

alleges that Mr. Herrin said that the SG R228 is a “shade of

maroon.” Mr. Herrin states, quite clearly, in response to

3M’s question “Anything else, any other products that you

maintain are purple?” that the R228 is “purple.” It is only

when 3M’s counsel asks him whether it “could be a shade of

maroon,” that he says it is possible.

To clarify, we add that the witness was actually asked “would” it

be described as maroon and the witness replied that “you could

say….” J. Herrin dep. dated August 22, 2005 at 18.

6

In response to a question about this product (Exhibit 10), the

witness was asked about “the people who have a need for a nail

file or depilatory product.” R. Herron dep. dated March 29, 2005

at 170. The witness stated that: “I said the woman who uses

them for her nails would not refer to it as sandpaper or coated

abrasive. Our customer, however, would refer to it as coated

abrasive.” R. Herron dep. dated March 29, 2005 at 170-71.

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Opposition No. 91119166

Applicant, itself, sells a wide variety of coated

abrasives in various shades of purple. For example, its

automotive aftermarket brochure shows a variety of shades of

purple products. See DeNuccio dep. June 28, 2005 at 52

(“They appear to be different shades of purple”) and Ex. 7;

DeNuccio dep. at 57 (3M sells “film discs [not paper or

cloth coated abrasives] in a 600 grit that are purple in

color”). See also Rowen dep. dated January 17, 2002 at 137-

38:

Q. Has the tag line the color purple is a trademark of

3M ever been used on a product which is not deep or

dark purple in color?

A. Yes…

Q. Is the tag line the color purple is a trademark of

3M ever used on a product that is lighter than a dark

or deep purple?

A. Yes.

Q. What products?

A. Products with a white Sterrite [stearate?] on them…

Q. Is the tag line the color purple is a trademark of

3M used on a product that is not paper or cloth backed?

A. Yes.

Abrasives come in different colors for a variety of

reasons. Some colors and shades occur naturally and others

result from the manufacturing process. For example, grit

affects the color of coated abrasives.

Q. And the grit impacts on the color of the disc, sir,

is that your testimony?

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Opposition No. 91119166

A. It has – yes, it does. It makes it look darker or

in some cases lighter.

DeNuccio dep. at 44. See also DeNuccio Ex. 8 (04060) (3M

pads are different shades of purple); R. Herron dep. dated

March 29, 2005 at 38 (“[B]oth the backing, the abrasive

grain and the adhesive can all have some impact on color”);

Lain dep. dated July 22, 2005 at 77:

Q. Do you think that depending on the grit size, it

would affect the shade of purple? Like, if something

30 grit or 40 grit – let’s say 40 grit and something’s

120 grit, would it be darker if it’s the 40 grit and

lighter if it was the 120 grit?

A. Yes.

Q. And why is that?

A. Because of the fact that the resins which hold the

mineral on there will take and absorb more of the color

so you have more voids in the coarser grits than you do

in the finer grits.

Q. Okay. So as the grits would go up, it would get

lighter in color?

A. It could.

Q. It could?

A. Also, if you change lots of color, it changes color.

Some colors are specified by the purchasers. R. Herron

dep. dated March 29, 2005 at 43 (“[W]e have a request from

[a major corporation] right now who insist they want a

purplish product from us and that’s the only color they are

willing to accept”). See also Sternberg dep. dated April 7,

2005 at 85, Ex. 657 and 658 (“And they have requested the

color purple for color coated abrasives? A. That’s right”).

20

Opposition No. 91119166

Q. Can you speak to the sales for any of the particular

[Moyco] products that you viewed this morning?

A. Yes, I know certainly in the 90’s, probably the 80’s

and maybe into the 70’s, and whatever industries we

were selling into, that we offered the color charts to

the customers and they picked whatever they wanted.

Could be any color. Some of the colors we looked at

have purple in various shades, the purples were

identified.

Sternberg dep. dated April 7, 2005 at 101.

Some colors are applied by the manufacturers to enable

consumers to distinguish the grit size of the abrasive,

particularly in a multi-step operation. Sternberg dep. Ex.

664 (“Moyco films are color-coded for easy identification”).

Sternberg dep. at 96 (“Do a lot of companies use color

coding systems other than yourself, do others use color

coding systems. A. Yes”); Wimer Ex. 17, p. 16 (Norton uses

color-coding for non-woven pads). Because workers in

furniture plants are “from Mexico and overseas and can’t

speak English and can’t read what’s on the back of the

belts, color has become more important for that reason.” R.

Herron dep. dated March 29 2005 at 61. See also Kodaka dep.

dated April 20, 2005 at 19-20:

It’s general knowledge that some end users, customers,

would like to see the abrasive films, in different

color coating so that their operators would not make a

mistake in applying the wrong abrasive film for their

specific application…

For instance, the largest application would be the

fiberoptic application for MIPOX, and usually they

would use maybe two or three different abrasives going

from course [sic coarse?] to fine, and they would like

to see the two or three different abrasive films in

21

Opposition No. 91119166

different colors so that they would not use the wrong

abrasive in the wrong order.

Kodaka dep. dated April 20, 2005 at 19-20.

Applicant also uses color, including purple, to

distinguish the application or use of its abrasives.

Q. The product is described as maroon, slash, purple.

Do you see that, sir?

A. Yes.

***

Is that an instance of 3M using purple to indicate

applications?

A. For nonwovens, yes, and not for coated. That’s when

– when I answered the question before, I was referring

to coated abrasives. The nonwovens do have color that

indicates application and how coarse the – how coarse

the nonwoven is.

DeNuccio dep. dated June 28, 2005 at 62 and 64. See also

Wimer dep. Ex. 14 p. 12 (“Scotch-Brite pads [non-woven

synthetic construction floor pads] are color-coded to easily

indicate the aggressiveness of the cut. The lighter the pad

color, the less aggressive the cut; the darker the color,

the more aggressive the cut”) (white, pink, red, maroon);

DeNuccio dep. dated June 28, 2005 at 59-60 (“Q. And looking

at the Scotch-Brite scuff sponges, does color indicate the

application of the product? A. The — these are nonwoven

abrasives and there is some – there is some color coding for

these nonwovens”). Applicant at first test-marketed its

SandBlaster sandpaper using the color purple to designate

that it was for use on bare surfaces. Rowen dep. dated June

22

Opposition No. 91119166

9, 2005 at 29 and Ex. 6 (“Q. It also shows purple in

connection with other colors that are also used to indicate

the application for the product; is that correct, sir? A.

Yes”).

We point out that, while applicant has limited its

goods to cloth and paper cloth abrasives, it has not limited

its goods to any particular industry. Indeed, cloth and

paper coated abrasives are sold alongside film and other

coated abrasives, including nonwoven abrasives, in the same

industries. DeNuccio dep. at 51 (3M’s Automotive

Aftermarket Division (AAD) sells abrasives with paper and

film backings); DeNuccio dep. at 60 (“Q. Are the nonwoven

products sold by the AAD sold by the same distributors as

the coated abrasives? A. Yes”).

Q. Based on your experience is there any overlap

between the customers for the film products and the

cloth and paper products?

A. Absolutely.

Q. What is the nature of the overlap?

A. There are a number of applications where film

products and paper- or cloth-backed products compete in

the marketplace and depends on the desires of the

customer and the performance of the individual product

application. One will provide more benefit than the

other. But we do have, for example our A275 product

which completes [sic competes?] everyday with the 3M

film products in the marketplace. And it’s growing a

product line for us often at the expense of 3M’s film

products.

J. Herrin dep. dated March 30, 2005 at 14.

23

Opposition No. 91119166

Can you use some film products for the same application

as paper products?

A. If you are talking comparable grit sizes, yes, very

definitely. And also you have to consider the backing

weights when you talk about the paper product. We have

light papers, we have light films, we have heavier

films, we have heavier paper.

R. Herron dep. dated March 29, 2005 at 177-78. See also R.

Herron dep. at 178 (“Well, film is the preferred product for

doing cam shafts now but paper was the preferred product

prior to the introduction of film”).

Applicant similarly markets film abrasives with paper

and cloth abrasives.

3M Woodworking Reference Manual

Abrasives for the woodworking industry

Stroke Sanding

Cloth, Paper and Film Products

Cloth

…

3M™ Xodust cloth 200 DZ…

Paper

…

Xodust paper 363UZ

Xodust paper 461UZ

Film

Xodust film 362RZ

Doeksen dep. Ex. 62, p.7 (3M 02969 – Maroon, Blue, and

Gray). See also Doeksen dep. Ex. 62, p. 5 (Final Finish

Wide Belt Sanding (Cloth – Regal Xodust cloth 970DZ, Paper –

Xodust paper 461UZ, and Film – Xodust film 362RZ)). See

also Doeksen dep. Ex. 63, pp. 17-19 (3M 00604-06) (3M’s

Stikit System consists of cloth, paper, and film coated

abrasives).

24

Opposition No. 91119166

Discussion - Acquired Distinctiveness

The Supreme Court has held that color alone can

function as a trademark. Qualitex Co. v. Jacobson Products

Co., 514 U.S. 159, 39 USPQ2d 1161, 1162 (1995) (“We conclude

that, sometimes, a color will meet ordinary legal trademark

requirements”). The Supreme Court has also made it clear

that “with respect to at least one category of mark -—

colors -- we have held that no mark can ever be inherently

distinctive.” Wal-Mart Stores Inc. v. Samara Brothers Inc.,

529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). Applicant, in

this case where it seeks registration of its purple color

applied to coated abrasives, requests registration under the

provision of Section 2(f) on the ground that it has acquired

distinctiveness. Therefore, applicant’s mark is only

registrable on the Principal Register if applicant has

submitted sufficient evidence that its mark has acquired

distinctiveness. “Distinctiveness is acquired by

‘substantially exclusive and continuous use’ of the mark in

commerce.” In re Owens-Corning Fiberglas Corporation, 774

F.2d 1116, 227 USPQ 417, 424 n.11 (Fed. Cir. 1985).

Inasmuch as the trial is complete and opposer has

submitted evidence challenging applicant’s claim of

distinctiveness, the burden of establishing that the mark

has acquired distinctiveness rests with applicant.

Yamaha strenuously asserts in its brief on appeal that

the ultimate burden of persuasion under Section 2(f) on

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Opposition No. 91119166

the issue of acquired distinctiveness is on Hoshino as

applicant. We completely agree. “The burden of

proving secondary meaning is on the party asserting it,

whether he is the plaintiff in an infringement action

or the applicant for federal trademark registration.”

1 Gilson, Trademark Protection and Practice § 2.09, at

2-72 (1987)… As this court observed while reviewing an

opposition proceeding in Levi Strauss & Co. v. Genesco,

Inc., 742 F.2d 1401, 1405, 222 USPQ 939, 942 (Fed. Cir.

1984), the “one seeking to register [the proposed

trademark] bears the burden of showing secondary

meaning under Section 2(f).”

Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840

F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).7

Furthermore, as our principal reviewing court has

observed: “By their nature color marks carry a difficult

burden in demonstrating distinctiveness and trademark

character.” Owens-Corning, 227 USPQ at 424.

In support of its contention that its color purple has

acquired distinctiveness, applicant points to the following

evidence. As direct evidence, applicant presented the

testimony of four witnesses. The first was Thomas Kelley,

President of Kelley & Kelly Industrial Supply, which is a

company that caters “to the manufacturing community in and

around central New York.” Kelley dep. dated June 10, 2005

at 9. Mr. Kelley identified coated abrasives as a 3M

product by the purple color. Kelley dep. dated June 10,

7

“[I]t appears to us that one opposing a Section 2(f)

registration published for opposition on the basis of that

section must have at least the initial burden of challenging or

rebutting the applicant's evidence of distinctiveness made of

record during prosecution which led to publication of the

proposed mark.” Yamaha, 6 USPQ2d at 1004.

26

Opposition No. 91119166

2005 at 20. Mr. Kelley’s company has eleven employees and

does business exclusively in New York State. Kelley dep.

dated June 10, 2005 at 33.

Applicant’s second witness was Paul Wimer, General

Manager of Long Flooring. This company is a small business

in the Washington, D.C. area with approximately 25

employees. Wimer dep. dated June 21, 2005 at 59. The

witness testified that “our sales people and our customers

know that the purple color is 3M.” Wimer dep. dated June

21, 2005 at 52.

The third witness was Charlie Boyd Hutton. Mr. Hutton

is the sole proprietor of Hutton Auto Craft Specialties,

which does “body and paint work on high-end specialty cars,

a lot of hand-fabricated street rods and then existing older

cars.” Hutton dep. dated May 24, 2005 at 9. The witness

appeared as a body shop manager on The American Hot Rod

series on Discovery Channel as well as the show Rides.

Hutton dep. dated May 24, 2005 at 13-14. The witness uses

“all 3M abrasives” and he uses “primarily one” jobber to

order abrasives. Hutton dep. dated May 24, 2005 at 23 and

27. He reports that: “When I order the sandpaper, they all

know who I am and they know exactly what I use; so when I

order up, I order the 3M purple 40 grit, and that’s what I

get.” Hutton dep. dated May 24, 2005 at 27. Mr. Hutton

testified that:

27

Opposition No. 91119166

Q. But you mentioned earlier that this was a 3M

product; is that right?

A. Yes, because of the dark purple.

Q. And are you able to tell that based on color alone?

A. Yes. As far as my knowledge, 3M is the only one

that actually makes the purple sandpaper, the dark

purple in the automotive sandpaper line.

Hutton dep. dated May 24, 2005 at 33.

The fourth witness was Sprigg Lynn, President of

Universal Floors, Incorporated, a wood flooring contractor,

also in the Washington, D.C. area that employs between 30

and 40 people. Lynn dep. dated May 23, 2005 at 61.

Mr. Lynn testified that “3M has a fine quality paper, we’ve

used it quite a bit, and I believe in 3M.” Lynn dep. dated

May 23, 2005 at 9. Furthermore, when asked “how do you know

that’s 3M paper?,” he responded: “The deep, dark colored

purple, I have never seen any other manufacturer with

anything that resembles this paper.” Lynn dep. dated May

23, 2005 at 39.

While we have considered this direct evidence of

trademark recognition, we find that it is unimpressive. The

market for coated abrasives is a multi-million dollar

market. “At best, these affidavits merely assert that

affiants believe that what amounts to a very small portion

of the purchasing public identify these [goods] as those of

applicant” because of the mark in the application. In re

David Crystal, Inc., 296 F.2d 771, 132 USPQ 1, 2 (CCPA

28

Opposition No. 91119166

1961). This limited evidence does not provide much support

to demonstrate that applicant’s shade of purple has acquired

distinctiveness as a trademark for coated abrasives.8

Applicant’s expert witness was Darris Turbyfill,

“chairman of the furniture technologies division at Catawba

Valley Community College in Hickory, North Carolina.”

Turbyfill dep. dated June 29, 2005 at 2. Mr. Turbyfill,

when shown several products, testified that he “would

recognize this as a 3M due to the dark purple color.”

Turbyfill dep. dated June 29, 2005 at 36. Furthermore “when

I see a dark purple-colored sandpaper, I naturally assume

and naturally think of that as a 3M product, because of that

– because of the marketing that they have done with this

color and their product.” Turbyfill dep. dated June 29,

2005 at 38. Furthermore, Mr. Turbyfill testified:

Q. In your experience, does the deep shade of purple

have any significance in the furniture industry?

A. As far as these belts are concerned, this deep

purple – when I’m in a furniture plant and I see a deep

purple belt, I identify that as a 3M product.

Turbyfill dep. dated June 29, 2005 at 50.

Opposer argues that Mr. Turbyfill’s expert report “was

written by counsel and his testimony is replete with errors

8

Applicant’s witness also maintained that a television home

improvement show host stated that he “loved those purple belts.”

Doeksen dep. at 11, Applicant’s Brief at 6. Even if this was not

hearsay, this equivocal statement would not be entitled to much

weight.

29

Opposition No. 91119166

of fact. His testimony is entitled to no weight.”

Opposer’s Brief at 18-19 (citation to record omitted). We

do note that Mr. Turbyfill testified as follows:

Q. What portions of Turbyfill exhibit 1 were written

by counsel?

…

A. The report was written by counsel and was reviewed

by me to make sure that everything about the report

that was written was accurate based upon my experience

in the industry and what we had talked about.

Q. Did you make any changes to the draft of the report

that was provided to you by counsel?

A. I think I may have made some, but I can’t remember.

There may have been some small – nothing as far as –

nothing major that I can recollect that was changed

after review.

Turbyfill dep. dated June 29, 2005 at 54.9

However, inasmuch as Mr. Turbyfill testified and was

cross-examined, we will primarily refer to his testimonial

evidence, and we do not need to rely on his expert witness

report. We also note that Mr. Turbyfill’s area of expertise

was confined to the furniture-making sector.

Furthermore, applicant also submitted 55 form

declarations from individuals. A sample declaration is set

out below:

9

Interestingly, applicant’s expert witness could not recall 3M

in its advertising referring to its purple product as

“distinctive” or “deep” purple. Turbyfill dep. dated June 29,

2005 at 85.

30

Opposition No. 91119166

Customer Statement

I am at least 18 years old, and I purchase products of

various manufacturers. I am generally knowledgeable

about sandpaper and other abrasive products. I am

familiar with purple-coated sandpaper/abrasives, and I

associate the distinctive purple color exclusively with

sandpaper products of 3M™ and no other manufacturer. I

verify under penalty of perjury that the foregoing is

true and correct.

Doeksen dep. Ex. 42.

Opposer argues that the Customer Statements:

[D]o not identify for whom the declarants work, or in

what capacity, how long they have worked there, what 3M

products they purchase or what other companies’

products they purchase. There is no contact

information to verify who these individuals are, with

four exceptions that appear to be written in later on

the forms by some unidentified person(s), and may or

may not be accurate. The declarants do not specify or

describe the shade of which purple they are supposed to

be referencing or the product backing.

Opposer’s Brief at 21-22.

Applicant, in its brief, has apparently withdrawn its

reliance on these statements:

SG focused instead on certain “consumer statements”

that 3M secured during the prosecution, arguing that

these statements are entitled to no weight with respect

to the distinctiveness calculus. While 3M disagrees

with SG’s contention, particularly where such

statements are commonly used to demonstrate secondary

meaning, 3M has instead presented direct evidence from

several third-party witnesses such as Messrs. Kelley,

Wimer, Hutton and Lynn to establish acquired

distinctiveness here.

Applicant’s Brief at 15 n. 8. See also Reply Brief at 2 n.1

(“Given 3M’s implied abandonment of the form customer

statements as evidence, SG sees no need to address them

further”). Even if applicant was still relying on these

31

Opposition No. 91119166

statements, these statements would be entitled to little

weight due to their cursory nature and the lack of much

basic information, such as even where most of the customers

work. In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d

1629, 1633 (Fed. Cir. 2003).

Applicant also argues that each “distributor receives

customer orders in its own way and by all manner of means

such as fax, email, phone, or in-person… The one constant in

terms of ordering 3M Purple product – a constant that SG

cannot dispute – is that real customers ordering real

products do so using two criteria: color and grit.” Brief

at 20. Applicant’s argument would have been stronger if it

had presented at least some copies of emails or faxes that

supported its argument. Even concerning customers’ phone or

in-person orders, there is little actual specific customer

evidence. One of the only specific examples of a customer

who does order by color and grit is set out below. However,

it is not clear if this type of ordering is actually the

result of the fact that the witness is a very small business

who deals with one or two distributors. See Hutton dep.

dated May 24, 2005 at 27:

A. Yes. I use the 3M purple on every product I do

every – every car because that is actually the product

of choice.

So all my sandpaper, when I order it, it’s the purple,

the dark purple.

32

Opposition No. 91119166

Q, How many jobbers would you say you currently use to

order abrasives?

A. Primarily one. But I also use another, another one

when my primary jobber is out of stock.

Q. Do the jobbers know that you use 3M’s products?

A. Yes, they do. When I call up and order the

sandpaper, they all know who I am and they know exactly

what I use, so when I order up, I order the 3M purple

40 grit, and that’s what I get.

This purchaser’s testimony appears to be similar to a

regular patron of a bar ordering a drink by simply saying:

“The usual.” This type of testimony is not evidence that

other customers without a prior relationship with a 3M

jobber regularly order coated abrasives by saying “3M purple

40 grit” just as new customers at a bar do not order by

saying “The usual.”

Applicant also provided evidence of its sales and

advertising. It is clear that applicant has advertised in

various trade magazines and promoted the color purple. One

ad, for example, features purple “thought” balloons with the

headline “What ordinary sandpaper can only dream to be.”

This is followed by the statement: “Introducing the purple

abrasive belt from 3M. We’ve taken ordinary sandpaper and

made it extraordinary.” FDM Furniture Design &

Manufacturing, Doeksen dep. Ex. 15 (An asterisk after the

purple balloons states that “The purple color is a trademark

of 3M.” Another ad in Hardwood Floors features a purple

lion with the phrase “Purple reigns” and the ad ends with

33

Opposition No. 91119166

the suggestion to “Just ask for them by color.” Wimer dep.

Ex. 3.10

Applicant has also included a legend on its coated

abrasives. There are two different versions of the legend:

“THE PURPLE COLOR IS A TRADEMARK OF 3M” and “The Color

PURPLE is a Trademark of 3M.” See, e.g., Kelley dep. Ex. 4,

Doeksen dep. Ex. 48, Turbyfill dep. Ex. 7, and Rowen dep.

Ex. 3. This legend has appeared on coated abrasives that

are not cloth or paper backed, and it has also appeared on

coated abrasives that are different shades of purple.

Applicant has also promoted its products by using the

following slogans: “Ask for it by color, not by name” and

“If it’s Purple, it’s from 3M.” Doeksen dep. dated June 7,

2005 at 41-42 and 69. See also Doeksen dep. Ex. 36

(00441)(01739) (“Ask for it by color, not by name”) and 41

(3M press release – “If it’s purple, It’s from 3M – Purple

discs join growing family of 3M purple abrasives”).

Applicant also points out that it has spent several

million dollars promoting its purple products and that the

sales of its products have grown steadily. However, we note

that even more extensive evidence of this type was not

10

Another ad in Hardwood Floors (Wimer Dep. Ex. 7) contains

several references to “choose purple” and “The PURPLE color” as a

trademark of applicant but the color of the belts in the

photocopy looks significantly different than some of applicant’s

other purple displays.

34

Opposition No. 91119166

necessarily sufficient when the involved mark was a color

mark applied to outboard motors:

Applicant has sold large numbers of its engines in a

wide variety of sizes for almost thirty years in only

one color: black. As noted above, applicant has spent

over a hundred million dollars advertising its engines,

all of which have been black, and three billion dollars

worth of these products have been sold. This extensive

presence in the marketplace is bound to create

recognition of the fact that applicant's engines are

black. The evidence also shows that while applicant is

not the exclusive purveyor of black outboard engines,

applicant is responsible for the majority of them.

That a large portion of the relevant purchasing public

knows applicant makes black engines is understandable

under these circumstances.

British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197,

1203 (TTAB 1993) (“Brunswick I”), aff’d, 35 F.3d 1527, 32

USPQ2d 1120 (Fed. Cir. 1994) (“Brunswick II”). Similarly,

the evidence in this case (some of which we have considered

but not specifically discussed because it is confidential),

which is significantly less impressive than the evidence in

Brunswick I and II, is also not sufficient.

While some of applicant’s advertising supports

applicant’s claim of acquired distinctiveness, inasmuch as

applicant is seeking registration of a color in a field

where color is common, sales and advertising evidence would

ordinarily not be sufficient by itself to demonstrate that

its color has acquired distinctiveness.

Second, a more basic problem with applicant’s evidence

concerns applicant’s trademark itself. We have earlier

found that applicant was not applying for multiple marks,

35

Opposition No. 91119166

but rather one distinctive shade of purple. In response to

opposer’s interrogatory requesting that applicant identify

each product on which applicant’s mark is used, applicant

responded by identifying the products with the following

identification codes: 3M 740I, 745I, 752I, 761D, 900D,

900DZ, 930DZ, 961UZ, 970DZ, and Imperial 3M Fibre Discs.

Applicant’s Responses to Opposer’s First Set of

Interrogatories at 2. Even among these products, there are

variations of the shade of the color purple. However,

applicant has used a legend that indicates that the color

purple (sometimes the Purple Color) is its trademark. Since

the ultimate question in this case is whether applicant has

shown that its mark has acquired distinctiveness, this type

of evidence provides some support to show that applicant

attempted to use its mark as a trademark, but it does not

show that applicant’s mark has actually acquired

distinctiveness. Indeed, much of the evidence would

indicate to many customers that applicant claims rights in

the color purple in general for all types of coated

abrasives – a position that applicant strenuously disavows

now. Therefore, to the extent that applicant is relying on

advertising and customer recognition for products with

different shades of purple, this evidence does not support

the registration for its specific shade in this

application.

36

Opposition No. 91119166

In addition, opposer has submitted significant evidence

and arguments to counter applicant’s claim of acquired

distinctiveness. For example, opposer has submitted

evidence that others are using purple in association with

coated abrasives and that others use a color coding system

for their coated abrasives. Regarding the statements of

applicant’s witnesses (Hutton, Kelley, Wimer, and Lynn),

opposer points out that none “of the four individuals were

offered as experts… Yet, 3M puts forth the testimony of

these four individuals and asks the Board, without any case

citation, to make the dazzling inference that this is

credible direct evidence of acquired distinctiveness.”

Reply Brief at 3. As we indicated above, we agree that the

testimony of these four, non-expert witnesses hardly

establishes that applicant’s mark has acquired

distinctiveness. It is hardly surprising that applicant was

able to find four customers or distributors who could

associate the specific color purple with applicant.

While undoubtedly these witnesses provide some evidence that

supports applicant, they do not provide a basis to conclude

that a sizable percentage of potential customers recognize

applicant’s mark as a trademark.

Opposer also introduced a survey to support its

position that applicant’s mark had not acquired

distinctiveness. Opposer’s survey expert, Philip Johnson:

37

Opposition No. 91119166

[C]onducted a study of approximately 600 members of the

universe of abrasive users and made a determination

about whether or not the color purple had any

significance to them in terms of trademark significance

or source designation…

I found that based on the results of the study, the

color purple does not have trademark significance. In

other words, it does not identify uniquely a single

source, 3M or otherwise, as the source of sandpaper or

abrasive products that are purple in color.

Johnson dep. dated April 7, 2005 at 18-19.

Mr. Johnson conducted a survey that involved

telephonically contacting users of abrasives. The survey

also involved a control. A control is “a twin product

attribute[,] service or stimuli that has the same

characteristics generally as the test stimuli, but does not

have the characteristic that is at issue… it would have all

of the characteristics of purple sandpaper but not be

purple.” Johnson dep. dated April 7, 2005 at 22. For the

control in the survey, Mr. Johnson chose orange sandpaper.

As a result of the survey, Mr. Johnson concluded that

“when one measures how many people would identify 3M or one

company, even if an unknown company, as a single source of

purple sandpaper, and you then subtract the similar

proportion among people who are asked about orange sandpaper

in the control, you end up with six percent, which is about

the same level you’d expect just based on noise or error.”

Johnson dep. dated April 7, 2005 at 34.

38

Opposition No. 91119166

Applicant argues that “serious deficiencies with

Mr. Johnson’s survey render the results virtually

meaningless. Above all, because this was a telephone

survey, respondents did not even see 3M’s Purple mark, and

their ability to recognize this mark could therefore not be

tested.” Brief at 22. Applicant’s other significant

criticism is that Mr. Johnson used “an inappropriate

screening question, which focused on users rather than

purchasers of sandpaper.” Brief at 22 n. 14.

At first glance, we agree with applicant that it

appears to be inappropriate to use a telephone survey when

there is a visual component to the mark. However, even in a

case involving letter marks with significant stylization,

the board, although cognizant of numerous defects with the

telephone survey, nonetheless did not find that the survey

was “virtually meaningless.”

We recognize that surveys taken by telephone can be, in

appropriate circumstances, inherently reliable.

However, in this case, given that the marks at issue

are design marks which have a substantially similar

appearance, much validity was lost when the survey was

conducted by telephone. Throughout this decision, we

have pointed to this du Pont factor, that is, the

substantial similarity of the marks in appearance,

which weighs heavily in our analysis. Given the visual

similarities, we question why the survey was done by

telephone, other than perhaps, of course, for the

obvious reasons of cost and time. Although the

questions posed to respondents indicated that Hilson

and Society used “quite similar looking logo[s]”, that

characterization is, in our minds, not enough. Simply

put, in cases such as this where so much turns on

similarities of the marks in visual appearance, survey

39

Opposition No. 91119166

respondents should be confronted with reproductions of

the marks rather than mere descriptions.

Hilson Research Inc. v. Society for Human Resource

Management, 27 USPQ2d 1423, 1438 (TTAB 1993).

Despite this and other serious weaknesses, the board

held that the Hilson survey was entitled to “some probative

value.” Hilson, 27 USPQ2d at 1439.

Here, opposer’s witness, Mr. Johnson, explained:

[W]hen you do secondary meaning, you want to isolate

the attribute that’s at issue and remove indicia of

origin, in the case of sandpaper, things like whether

it’s on a belt or it’s on a disk or whether it’s flat.

How people are used to seeing it varies widely

depending on how they use sandpaper.

So in order to control for all the variables, the best

way to do it is to use a verbal description of purple,

which is also consistent with the claim and even the –

the writing on the back of some sandpaper samples I saw

from 3M that said the color purple is a trademark of

3M.

Johnson dep. dated April 7, 2005 at 21.

Furthermore, opposer argues that using a telephone

survey and the term “purple” would actually be more

favorable to applicant because respondents would not be

limited to any shade of purple. “If a respondent were

familiar with the light-appearing stearate product, or the

reddish-purple 745I product or the 930DZ product, the

respondent could express awareness of a purple 3M product,

and be counted as having identified 3M as a source of purple

product.” Reply Brief at 7. In effect, a telephone survey,

to the extent that it was properly conducted, should not

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Opposition No. 91119166

minimize responses that would indicate trademark

recognition.

Q. In your opinion, is there any significance to the

fact that purple includes a range of shades?

A. Well, it means that because when people answer a

question for purple, they can visualize a shade of

purple that they’re familiar with. It means that the

results of the survey, if anything, overstate

significance of any particular shade of purple.

Because here it’s for all shades of purple rather than

a particular shade. Purple does not have significance.

So any one shade of purple would have less than that.

Johnson dep. dated April 7, 2005 at 57-58.

Regarding the objection that a telephone survey should

be virtually meaningless, we ultimately agree with opposer

that, despite our initial misgivings, a telephone survey

involving a color, at least under the facts of this case,

is not inherently unreliable. To the extent that opposer’s

survey is subject to criticism, it could also be criticized

as erring on the side of over-inclusion, because any

customer who saw any shade of the color purple as indicating

a single source for coated abrasives would have responded

affirmatively.11

Regarding applicant’s second objection that the survey

questions screened for users rather than purchasers, again

Mr. Johnson explained that “when you’re dealing with

11

There is no evidence to indicate that any non-de minimis number

of participants, who were familiar with applicant’s purple-coated

abrasives’ shade of purple, would actually verbalize 3M’s color

as another color, e.g., blue, black, or red.

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Opposition No. 91119166

something like this, which is a product or service that is

felt to have acquired distinctiveness through using it or

seeing it, you need to ask people who use it or see it.”

Johnson dep. dated April 7, 2005 at 26. He further

explained that inasmuch as these were “industrial

interviews” and if you are a business user, “they are the

people for whom the color of sandpaper should have

distinctiveness.” Johnson dep. dated April 7, 2005 at 27.

These users included “people in manufacturing, woodworking,

machine shops, car repair, metalworking, refinishing,

cabinet-making, furniture-making, who are the SIC12 codes

identified by 3M in their interrogatories as the ones where

purple is believed to have significance.” Johnson dep.

dated April 7, 2005 at 24. “Someone who buys it without

seeing it would not know what color they’re dealing with.

So one would not feel it was appropriate to ask them about

the color of these products.” Johnson dep. dated April 7,

2005 at 27. To the extent that applicant does market a

significant number of its products for commercial, as

opposed to consumer use, the survey’s screening question

would limit the survey to those who had an opportunity to

12

SIC – “Standard Industrial Classification: a system used by

the federal government to classify business activities for

analytical and reporting purposes.” The Random House Dictionary

of the English Language (unabridged) (2d ed. 1987). We take

judicial notice of this definition. University of Notre Dame du

Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB

1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

42

Opposition No. 91119166

observe the color of the product as opposed to business

buyers who may have little opportunity to see the actual

color of the products they were buying based on other

people’s recommendations.

Overall, we find that the survey, despite some unusual

features, is probative and we will accord it some weight on

the question of acquired distinctiveness. Here, it provides

some support for opposer’s argument that applicant’s mark

has not acquired distinctiveness.

Another factor that weighs against applicant is the

number of third-party users of purple-colored abrasives.

In respect of registration, there must be a trademark,

i.e., purchasers in the marketplace must be able to

recognize that a term or device has or has acquired

such distinctiveness that it may be relied on as

indicating one source of quality control and thus one

quality standard. When the record shows that

purchasers are confronted with more than one (let alone

numerous) independent users of a term or device, an

application for registration under Section 2(f) cannot

be successful, for distinctiveness on which purchasers

may rely is lacking under such circumstances.

Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ

939, 940-41 (Fed. Cir. 1984). See also In re Boston Beer

Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir.

1999) (“The examples of use of the phrase by others in its

descriptive form support the board's conclusion that the

mark had not acquired distinctiveness”).

In this regard, we fully agree with opposer's

contention that long and continuous use alone is

insufficient to show secondary meaning where the use is

not substantially exclusive.

43

Opposition No. 91119166

Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d

1580, 1588-89 (TTAB 1987).

In order to be relevant to the question of whether

applicant’s mark has acquired distinctiveness, the third-

party uses do not have to be identical to applicant’s mark.

Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49

USPQ2d 1705, 1720 (TTAB 1998):

Here, given the high degree of descriptiveness inherent

in tire tread designs, together with the fact that many

third parties have used designs similar to that of

applicant -- including a significant number of

substantially similar, but not identical, tire tread

designs for mud and other all terrain tires, we are not

convinced that the purchasing public has come to view

applicant's three-stage lug configuration as a

trademark for its tires.

There are several points that we need to address here.

First, applicant seeks to distinguish some of the purple-

coated abrasives sold by others by arguing that it “does not

promote or sell its abrasive products in the beauty care

marketplace.” Brief at 10 n.6. See also Brief at 49

(“Because 3M does not market coated abrasives to the beauty

industry, however, this argument [that the color purple is

important in that industry] is irrelevant”). At the same

time, applicant argues that it “now markets and sells 3M

Purple paper-backed and cloth-backed coated abrasives to

nearly every major industry in which abrasives are used.”

Brief at 27. In addition, despite its three motions to

amend the description of the mark and identification of

44

Opposition No. 91119166

goods in this case, it has not limited its “coated abrasives

with either paper or cloth backing” to any particular

industry. Therefore, applicant’s identified goods must be

presumed to include coated abrasives with either paper or

cloth backing in the beauty care, dental, electronics, and

other industries. As an analogy, a party seeking

registration for its mark for “footwear” and alleging that

it has acquired distinctiveness cannot dismiss evidence that

others commonly use the same term to describe shoes by

claiming that it is using the mark on sandals only.

Applicant seeks registration of its mark for coated

abrasives made of paper and cloth and it is not entitled to

a registration for this mark unless the evidence shows that

its mark has become distinctive for those goods. As a

result, the uses by third parties of purple-colored paper

and cloth abrasives in all fields is not only relevant, but

it clearly supports the position that applicant’s mark has

not acquired distinctiveness.

Furthermore, we reject applicant’s argument that coated

abrasives that are not made of paper or cloth are irrelevant

in determining whether applicant’s mark has acquired

distinctiveness. Use of the same or similar marks on

related goods is relevant in determining whether applicant’s

mark has acquired distinctiveness. Edward Weck Inc. v. IM

Inc., 17 USPQ2d 1142, 1145 (TTAB 1990) (parenthetical

45

Opposition No. 91119166

omitted) (“[O]ther factors also weigh in our conclusion that

applicant has failed to establish acquired distinctiveness.

First, opposer has demonstrated that others have used and

are using the color green for related products. Applicant's

use has therefore not been exclusive”). See also Spraying

Systems Co. v. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181,

1186 (7th Cir. 1992) (“[E]vidence of third-party use of the

‘JET’ formative casts further doubt on Spraying Systems’

assertion of secondary meaning. While it is true that the

probative value of this evidence is somewhat diminished by

Spraying Systems’ contrary evidence of lack of use and the

only distant relatedness of several third-party products,

there is enough relevant third-party use that the point

retains its vitality”).

The evidence shows that applicant sells film, paper and

cloth coated abrasives. These coated abrasives are often

marketed to the same customers in the same fields. These

purchasers, who are familiar with the common use of colors

(including purple) on film coated abrasives are much less

likely to believe that, on paper and cloth coated abrasives,

where colors are also used, that one color, purple,

identifies the product of a specific company.

Applicant also argues that “SG cites its laundry list

of so-called ‘purple’ products that allegedly negates any

claim that 3M might have of exclusive use… But none of

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Opposition No. 91119166

these products are 3M Purple in color.” Brief at 29.

However, the fact that other shades of purple are not the

same as applicant’s shade does not mean that these products

are irrelevant. Edward Weck Inc., 17 USPQ2d at 1145 (“Since

others have used this same color, albeit a different shade

of the color green, the relevant public is less likely to

view the color as an indicator of origin than as mere

ornamentation lacking in trademark function”). See also

Brunswick I, 28 USPQ2d at 1203 (“When the party which claims

that matter has become distinctive of its goods is faced

with use by others of the same or similar matter on the same

goods, that party has a difficult burden to meet”).

Here, opposer has submitted evidence of the use of the

color purple or colors that are shades of purple for coated

abrasives. While it is unlikely that everyone would agree

that all of opposer’s examples are necessarily purple, it is

clear that this is evidence that various shades of purple

are used on coated abrasives by others.

We note that where “the use of colors is common in a

field, an applicant has a difficult burden in demonstrating

distinctiveness of its claimed color.” In re Howard S.

Leight and Associates Inc., 39 USPQ2d 1058, 1060 (TTAB

1996). This is not a case such as Owens-Corning where color

is an unusual feature for paper and cloth abrasives.

Rather, it is a case where color is used by others in the

47

Opposition No. 91119166

field for a variety of reasons. Applicant, therefore, has a

difficult burden in this case of establishing acquired

distinctiveness. When we consider all the evidence of

record on the issue of acquired distinctiveness,

applicant’s evidence falls short of showing that its

specific shade of purple has acquired distinctiveness. We

reach this conclusion after having considered applicant’s

evidence of acquired distinctiveness both individually and

as a whole that may be greater than the sum of its

individual parts. Nonetheless, despite the volume of

evidence, there is little direct evidence of customer

recognition, and applicant’s circumstantial evidence is

simply not very persuasive. We conclude that, ultimately,

applicant has not sustained its burden of showing that its

mark has acquired distinctiveness. Therefore, the

opposition is sustained for that reason.

Functionality

While we have found that applicant’s mark is not

entitled to registration because it has not acquired

distinctiveness, we proceed to the last issue, which is the

question of whether applicant’s mark is functional. “Like

any other mark, the use of color -- if functional -- cannot

serve as a trademark.” Brunswick II, 32 USPQ2d at 1120.

Furthermore, “[f]unctionality having been established,

whether [applicant’s design] has acquired secondary meaning

48

Opposition No. 91119166

need not be considered.” TrafFix Devices Inc. v. Marketing

Displays Inc., 532 U.S. 23, 58 USPQ2d 1001, 1007 (2001).

See also M-5 Steel Mfg. Inc. v. O'Hagin's Inc., 61 USPQ2d

1086, 1097 (TTAB 2001) (If “applicant's designs are

functional, any evidence of distinctiveness is of no avail

to applicant in support of registration”).

On the subject of functionality, the Supreme Court has

held:

Discussing trademarks, we have said “‘[i]n general

terms, a product feature is functional,’ and cannot

serve as a trademark, ‘if it is essential to the use or

purpose of the article or if it affects the cost or

quality of the article.’” [Qualitex Co. v. Jacobson

Products Co., 514 U.S. 159, 165, 34 USPQ2d 1161 (1995)]

(quoting Inwood Laboratories, Inc. v. Ives

Laboratories, Inc., 456 U.S. 844, 850, n. 10 [214 USPQ

1] (1982)).

TrafFix Devices, 58 USPQ2d at 1006.

In addition, the Federal Circuit has discussed the

effect of the amendment of the Lanham Act to expressly

provide for the refusal of trademarks on the ground of

functionality.

Congress explicitly recognized the functionality

doctrine in a 1998 amendment to the Lanham Act by

making “functionality” a ground for ex parte rejection

of a mark. 15 U.S.C. §1052(e)(5) (2000). Under this

provision, a mark that comprises “any matter that, as a

whole, is functional” is not entitled to trademark

protection. Id. (emphasis added). Although the new

statutory basis for refusal of registration does not

apply in this case, we note that the 1998 amendment was

intended to “make explicit some of the current

practices of the Patent and Trademark Office with

respect to the trademark protection of matter that is

wholly functional,” and referred to the amendment as a

“mostly technical,” “housekeeping” amendment.

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Opposition No. 91119166

Valu Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61

USPQ2d 1422, 1425 (Fed. Cir. 2002) (footnotes omitted).

Because the application at issue here was filed on May 18,

1998, the statutory functionality section does not apply.

Valu Engineering, 61 USPQ2d at 1425 n.3 (“The statute

applies only to applications filed after October 30, 1998”).

In this case, opposer seeks to show that the color

purple is functional for coated abrasives because “purple is

a by-product of the manufacturing process, and purple is

used in color-coding.” Brief at 38. Opposer argues that

“the purple of SG’s Premium Red products is based in part on

the components and the purple color of SG’s R228 family of

products is the natural by-product of the manufacturing

process, and appropriation of the purple color by 3M would

disadvantage SG, requiring it to alter products it has sold

for more than 30 years.” Id. More specifically, opposer

maintains that “[d]yeing coated abrasives a dark color has

the functional use of concealing imperfections like cracking

and streaking. Purple is a dark color. 3M’s purple color,

therefore, is functional when used on coated abrasives. It

functions to conceal imperfections like cracking and

streaking.” Reply Brief at 15 (citation to record omitted).

Applicant, on the other hand, points out that “SG’s

abrasives are simply not purple.” Brief at 37.

Furthermore, “SG claims of de jure functionality also fail

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Opposition No. 91119166

because there are simply too many variables at play in the

manufacturing process to support SG’s argument. It is

simply impossible to predict that this process would, with

any regularity, produce a single color close to 3M Purple.”

Brief at 38. Applicant also points out that opposer’s

expert witness stated “that ‘[c]olor, per se, is not related

to the performance of a coated abrasive….’ SG Ex. 17 at 1,

an obvious admission that color is not functional.” Brief

at 38 n. 23.

We start by noting that the color of an item can be a

functional feature of the goods even if it does not make the

product perform better. See Brunswick II, 32 USPQ2d at

1122-23:

The color black, as the Board noted, does not make the

engines function better as engines. The paint on the

external surface of an engine does not affect its

mechanical purpose. Rather, the color black exhibits

both color compatibility with a wide variety of boat

colors and ability to make objects appear smaller.

With these advantages for potential customers, the

Board found a competitive need for engine manufacturers

to use black on outboard engines. Based on this

competitive need, the Board determined that the color

was de jure functional. This court discerns no error

in the Board's legal reasoning and no clear error in

its factual findings.

Therefore, the statement of opposer’s expert was not an

admission that applicant’s mark was not functional.

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Opposition No. 91119166

Next, the witness explained the intricacies of the

process of making coated abrasives. See Freese dep. dated

March 31, 2005 at 23 – 24:13

Q. Do coated abrasive products come in different

colors?

A. Yes.

Q. What colors of coated abrasive products have you

seen over the years?

A. Almost white to black, and all colors in between.

Q. Do you have an understanding why coated abrasive

products come in different colors?

A. Yes. It is usually based on what materials are used

to produce the coated abrasives.

Q. Do people add dyes and other coloring agents to

coated abrasive products?

A. Yes.

Q. In what circumstances are you familiar with

companies adding dyes or coloring agents for coated

abrasive products?

A. They will sometimes add color to the backing

material so that when the coated abrasive is flexed,

you don’t see cracks. They will add color sometimes,

or they will add some sort of pigments to try to get

away from what looks like streaking. It is usually

cosmetic, and they will add color to denote application

if it is woodworking or whatever, you know.

Mr. Freese testified that several factors affect the

color of an abrasive. One is the color of the backing

material.

Either it is a white, or if it is treated with a

phenolic, it is going to be red or real maroon.

13

The Freese testimony is similar to the previously discussed

evidence concerning the use of color in the abrasive industry.

52

Opposition No. 91119166

Depends on the fillers and such. Then you have the

resin itself, which is usually highly colored.

Q. But with a phenolic resin14 such as Exhibit 70, is

this generally a product which would be, what did you

say, very deep red?

A. Yes. It can range anywheres from depending on the

catalyst from an amber all the way up to a deep purple.

Q. And what would cause a phenolic resin such as

Exhibit 70 to go from a deep red into a purple color?

A. Type of catalyst, and the concentration of the

catalyst.

Q. What is the catalyst used for?

A. The catalyst is actually what drives the reaction to

make the resin…

Q. And what kind of catalysts are used in making

phenolic resins that are used for making coated

abrasives?

A. Usually sodium hydroxide, sodium carbonate, barium

hydroxide. And that’s the main ones.

…

Q. What is that impact?

A. Usually makes them somewhat red in color depending

on the concentration. The more catalyst, the deeper

the red up to and including purple.

Freese dep. dated March 31, 2005 at 25, 27 – 28.

Another factor that can affect color is the filler that

is used in the manufacturing process.

14

“Phenolic resins continue to be the most important bonding

systems and the development of today’s high performance products

would not have been possible without them… Because of their

hardness, toughness, and heat resistance, phenolic resin

adhesives are more durable than glue bonds. Fillers added to the

formulation further increase bond strength and aid in dissipating

heat.” Coated Abrasives at 14, R. Herron Ex. 1.

53

Opposition No. 91119166

A. Yes, graphite is used as a filler.

Q. Does graphite have any other function when it is

used in connection with coated abrasive products?

A. Yes. It reduces static. And it also makes the

coated abrasive somewhat dark in color. Almost toward

a black… It could go from a gray to almost a black

depending on how much you put in.

Freese dep. dated March 31, 2005 at 35.

The substrate (backing) can also effect the color.

Q. And I believe you testified that the substrate and

the binder color may interact; is that true?

A. Yes. That’s the – it has to or they would just fall

off…

Q. And are there occasions when an interaction may

product a deep red or a purple color?

A. Yes. If you have a red resin, you have blue

backing, you are going to get a purple color showing

through.

Freese dep. dated March 31, 2005 at 35-36.

In response to this testimony, applicant argues that

opposer’s argument of functionality “fails because there are

simply too many variables at play in the manufacturing

process to support SG’s argument… Mr. Freese and SG engage

in a technical exercise in ‘what if.’ Both emphasize the

countless different variables that can impact the resultant

color of a coated abrasive.” Brief at 38.

This case is different from most color functionality

cases. In the typical color case, the final color of the

product is normally dictated by aesthetic considerations.

In Owens-Corning, the Court found that a “pink color mark

54

Opposition No. 91119166

registered for fibrous glass insulation does not confer a

‘monopoly’ or act as a barrier to entry in the market. It

has no relationship to production of fibrous glass

insulation. It serves the classical trademark function of

indicating the origin of the goods.” 227 USPQ at 421.

Furthermore, the record revealed that Owens-Corning was the

only manufacturer to color insulation, which was ordinarily

a light yellow-white coloring. 227 USPQ at 420. Similarly,

in Brunswick II, the basic color of the engines after the

manufacturing process was not an issue.

In these Federal Circuit cases, the product was not

alleged to come in a variety of colors as a result of the

manufacturing process. The products all seemed to come in a

basic color that was then dyed or painted the desired color.

See also In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000)

(Pink for bandages); In re Orange Communications Inc., 41

USPQ2d 1036 (TTAB 1996) (Orange and yellow pay telephones);

Edward Weck Inc., 17 USPQ2d 1142 (Green for surgical

instruments).

What is unusual about this case is that the

manufacturing process of coated abrasives, unlike

insulation, results in products with numerous colors.

Indeed, even a quick glance at many company catalogs of

record such as opposer’s, applicant’s, and third parties’

featuring coated abrasives demonstrates that the world of

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Opposition No. 91119166

coated abrasives is not a monochromatic or black and white

world. Instead, it is one in which color is diverse and

common.

As discussed previously, coated abrasives consist of a

backing, abrasive particles, and an adhesive/bonding agent.

There are approximately 750 different types of raw

materials used in the manufacture of coated abrasive

products. The variable combinations of these component

parts are almost limitless. Backings might be film,

paper, cloth, fiber, or a combination of these

materials. The bonding agents or adhesives can be any

number of different glues and resins. And the abrasive

grains in general use today range from natural and

synthetic minerals such as emery, garnet and crocus,

through aluminum oxide, silicon carbide and the new

zirconia alumina and ceramic alumina abrasive

combinations.

CAMI’s “Coated Abrasives” brochure at 2, R. Herron dep. Ex.

1 (emphasis added).

These many different combinations of materials can

result in coated abrasives of many colors. Freese dep.

dated March 31, 2005 at 23-24 (“Almost white to black, and

all colors in between”).

Further complicating the picture is the fact that

manufacturers of coated abrasives tend to dye their products

for a variety of reasons, including to maintain a uniform

appearance.

Q. Do people add dyes and other coloring agents to

coated abrasive products?

A. Yes.

56

Opposition No. 91119166

Q. In what circumstances are you familiar with

companies adding dyes or coloring agents to coated

abrasive products?

A. They will sometimes add color to the backing

material so that when the coated abrasive is flexed,

you don’t see cracks. They will add color sometimes,

or they will add some sort of pigments to try to get

away from what looks like streaking.

Freese dep. dated March 31, 2005 at 24.

The dyes tend to be darker in tone to mask streaking in

the products. Freese dep. dated March 31, 2005 at 42.

Occasionally, color is added to accommodate customers’

requests.

Q. You mentioned the automotive industry you testified

about currently [a major corporation] has requested a

purple color product. Can you tell me what kind of

product that is?

A. It is a film product. They are asking specifically

for a purple product. They had to approve the color

and they insisted that it be purple. And frankly the

root of that request came from the technology center

and I think was driven more by one particular

individual than anyone else. But he made it abundantly

clear that if the product that he offered was not

purple we would not be able to sell them.

R. Herrin dep. dated March 29, 2005 at 180.

In addition, “sometimes the color is determined by the

grit used.” Freese dep. dated March 31, 2005 at 23.

Similarly, the filler can effect color. Freese dep. dated

March 31, 2005 at 35 (Graphite, which is used as a filler,

“makes the coated abrasive somewhat dark in color”).

Finally, another factor we must consider is that the

field of coated abrasives is not a static field. New

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Opposition No. 91119166

abrasives, backing, and bonding materials are being

developed, and each of these materials may result in a

change in color. See Coated Abrasives History, “Coated

Abrasives” brochure, Herron dep. Ex. 1 at 3-4. See also Id.

at 5 (“The continuing evolution of manufacturing methods and

equipment has seen similar developments within the coated

abrasives industry. Stronger backings, tougher minerals,

improved adhesive systems and better splices are results of

an ongoing technological effort to meet the increasingly

critical demands of the marketplace”).

Therefore, we consider the fact that the field in which

the parties compete is a dynamic field in which innovation

is constantly occurring. Also, as discussed earlier, color

is common. Furthermore, there are hundreds of combinations

of abrasives, backing, and adhesives that result in numerous

natural colors of the adhesives. In the field, there are

also reasons for manufacturers to add dyes to darken the

coated abrasives. Indeed, several shades of the color

purple appear on various coated adhesive products.

Therefore, with respect to competitive need, we find that

opposer has set out a prima facie case that coated abrasive

manufacturers have to be able to use various shades of

purple, including applicant’s.

Another argument that opposer makes is that “[c]oated

abrasives are color coded to denote application and grit or

58

Opposition No. 91119166

coarseness.” Brief at 39. See Kasco Corp. v. Southern Saw

Service Inc., 27 USPQ2d 1501 (TTAB 1993) (“[T]he foregoing

clearly establishes that Southern Saw's various ‘color-

keyed’ or ‘color-coded’ wrappers -- including its green

wrapper -- serve to enable purchasers and users of the

blades to quickly identify and distinguish one blade type

from another. Thus, the various colored wrappers have a

functional or utilitarian purpose”). Opposer points to the

fact that color coding nonwoven, film and other coated

abrasives is common and that color is often used to

designate grit size. See Sternberg dep. dated April 7, 2005

at 12 (“I know a lot of industries that use it [color-

coding]. The, the [sic] hobby industry uses it, the

electronics industry. There’s even a fellow who polishes

and refinishes pool sticks. He uses his so that if he, if

it has a nick in it he refurbishes it that way”); Id. at 96

(“Q. Do a lot of companies use color coding systems other

than yourself, do others use color coding systems? A.

Yes”); J. Herrin dep. dated March 30, 2005 at 23 (“We have a

clear color coding scheme for our film products that

identifies the grit size of the abrasive by the color of

back print… I know the other competitors, at least Moyco

uses the color coding system for their grit sizes”). See

also Kodaka dep. dated April 20, 2005 at 19-20:

Q. Mr. Kodaka, do you know of or are you familiar with

any sort of color coating [sic coding?] system?

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Opposition No. 91119166

A. Yes.

Q. I’m sorry with coated abrasives?

A. Yes. It’s general knowledge that some end users,

customers, would like to see the abrasive films, in

different color coating so that their operators would

not make a mistake in applying the wrong abrasive film

for their specific application…

For instance, the largest application would be the

fiberoptic application for MIPOX, and usually they

would use maybe two or three different abrasives going

from course [sic coarse?] to fine, and they would like

to see the two or three different abrasive films in

different colors so that they would not use the wrong

abrasive in the wrong order.

Indeed, applicant itself uses color coding for its

abrasive products.15

Q. The product is described as maroon, slash, purple.

Do you see that, sir?

A. Yes.

***

Is that an instance of 3M using purple to indicate

applications?

A. For nonwovens, yes, and not for coated. That’s when

– when I answered the question before, I was referring

to coated abrasives. The nonwovens do have color that

indicates application and how coarse the – how coarse

the nonwoven is.

Q. And the nonwovens are sold by the same distributors

as sell the coated abrasives; is that correct?

A. Yes.

15

As mentioned earlier, there is some disagreement about whether

nonwoven abrasives are coated abrasives. The CAMI brochure that

was produced in cooperation with applicant clearly identifies

nonwoven abrasives as coated abrasives. Even if they are not, as

the evidence indicates, they are related to coated abrasives.

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Opposition No. 91119166

And the nonwovens are sold for use in the automotive

aftermarket, just as are the coated abrasives; is that

correct?

A. Yes.

DeNuccio dep. at 62 and 64. See also Wimer Ex. 14 p.12

(“Scotch-Brite pads [non-woven synthetic construction floor

pads] are color-coded to easily indicate the aggressiveness

of the cut. The lighter the pad color, the less aggressive

the cut; the darker the color, the more aggressive the

cut”); Zelgart dep. Ex. 22 (“General Purpose Grade

Maroon/Purple Abrasives” and “Ultra Fine Grade Gray

Abrasives”); Kelly dep. Ex. 13 at 9 (emphasis added):

3M Industrial Products for Metalworking

Prices effective as of March 6, 2005

3M™ Roloc™ Discs

Proved a fast, efficient method of grinding, blending,

leveling and finishing on all types of metal. They

lock securely in place with just a half twist…another

half twist and they’re off. Each disc is color coded

by grade.

At one point, applicant even introduced a paper-coated

abrasive product that was color coded with purple as one of

the colors used to code the product.

Q. Now, sir, did the SandBlaster test line, SandBlaster

hand-sanding test line we’ve been talking about, did

the products come in three different colors?

A. Yes, it did – yes, they did.

Q. And which colors were selected to become a part of

this new line?

A. Green purple and gold…

Q. And how did you come up with the green color?

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Opposition No. 91119166

A. The green was a product that had been in the company

for – since, really, 1998. It was designed for

sanding, stripping later paint, so it was a really good

fit; and we’d been selling the gold product for a

number of years as well, and both of those being

premium products, and it excelled in its between coat,

finer grades…

Q. And why did you choose purple at the time?

A. Well, we assessed our – our timeline as to the

test, and we also – our technical capabilities. You

know the green was in the company, and the gold was in

the company as products as purple – as was purple. So

all of the raw materials, the resins, the pigment that

goes into making purple was in the company, and it was

an easy – it was an easy choice given our tight

timeline to get launch – test – you know, get into that

test base.

Zelgart dep. dated June 17, 2005 at 63-64.

Applicant points out that someone “erroneously chose 3M

Purple as the color used to designate the bare surfaces

product in the test market. As soon as the error was

discovered – just after the limited test market run16 – 3M

immediately removed 3M Purple from the SandBlaster™ hand

sanding line.”17 Brief at 42. The SandBlaster “launched

nationally in early 2001 with a green, maroon and gold

offering.” Brief at 43; Zelgart dep. dated June 17, 2005 at

69.

While we are not convinced that third parties would

necessarily have to use applicant’s shade of purple to color

16

The test market consisted of “a couple of hundred stores to

Wal-Mart.” Zelgart dep. dated June 17, 2005 at 62.

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Opposition No. 91119166

code their coated abrasives, we nonetheless see the evidence

of color coding as support for the general proposition that

there is a competitive need for color, including the color

purple, to be available for others to use in the coated

abrasive industry.18 In the field of coated abrasives,

color serves a myriad of functions, including color coding,

and the need to color code lends support for the basic

finding that color, including purple, is functional in the

field of coated abrasives having paper or cloth backing.

When we consider this evidence, we find that applicant

has not rebutted opposer’s prima facie case that there is a

competitive need for others in the industry to use the

color purple. Significantly, unlike other cases, there is a

competitive need for others to produce coated abrasives

using a variety of materials. These materials result in

coated abrasives that are a variety of colors. The colors

that may result include shades of purple. While applicant

is claiming a distinct shade of deep purple, it admits that

it sells products that are in different shades of purple,

including those that bear a legend claiming that the purple

color is a trademark of applicant’s. Indeed, because of the

vagaries of color with coated abrasives, applicant actually

17

Apparently references remained on applicant’s website until

2005. Zelgart dep. dated June 17, 2005 at 178. Applicant’s

Brief at 42 n. 27.

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Opposition No. 91119166

sells a coated abrasive that is lighter in color than its

claimed shade, because when the abrasive is actually used,

it will appear as the deep shade of purple. Applicant’s

Brief at 45 (“[T]o prevent loading on fine grit sandpaper,

3M uses a white stearate, or lubricant, on top of the deep

purple color. This results in a product that appears

lighter in color. In fact, however, as the stearate is worn

off during the sanding process, the original deep purple

color shows through”) (citation to record omitted).

When color is so subject to variables that applicant

itself needs to sell its own “distinct” shade of purple in a

different shade of purple, it would place competitors at a

disadvantage if they were forced to vary their production

techniques and research to avoid subjecting themselves to

claims of infringement by a company that cannot consistently

market its own product with the same distinctive shade of

purple.19 In this varied and innovative field, applicant

18

Of course, this evidence provides additional support for our

earlier finding that applicant has not demonstrated that its mark

has acquired distinctiveness.

19

We add that in industries such as the coated abrasive industry

where color is common, the ability to distinguish even

“distinctive” shades of color becomes more difficult because of

the inherent variability of consistently reproducing color.

Opposer’s color expert testified as follow:

Q. Correct. But if you have a – if you did receive a

cutout of the actual piece of sandpaper that was submitted

by 3M, then all ambiguity would be removed as to what the

color was that was covered by the application?

A. Well, that’s an interesting question. There still

would be ambiguity because of a number of things. Even

within a particular sample you can have variations across

the sample.

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Opposition No. 91119166

simply cannot foreclose others from using a deep color

purple that may result from either the manufacturing or

dyeing process.

We also note that producers of coated abrasives also

frequently dye their coated abrasives. Normally, the dye is

a dark color to help mask streaking and other problems.

Applicant’s deep purple shade would fall within the category

of results that could occur when competitors attempt to dye

their products. We find the rationale below to be relevant

to the facts of this case.

In contrast to the many shades of color available for

fiberglass insulation, the evidence shows that the

color palette available for the manufacture of fly rods

is extremely limited. One limiting factor is the

method by which the color is applied to the rod. The

rod is made in part of graphite, which is a carbon and

so is naturally black, and the color is applied as a

dye, not a paint. Only a few dark shades successfully

mask the black base and colors applied to it darken

deeply. Under these circumstances, granting exclusive

use of a color to one manufacturer would severely

restrict competition; there would be little left for

the rest of the world.

R.L. Winston Rod Co. v. Sage Manufacturing Co., 838 F. Supp.

1396, 29 USPQ2d 1779, 1781 (D. Mont. 1993). See also

Qualitex, 34 USPQ2d at 1165 (“[If] a ‘color depletion’ or

I was making reference to the point that from output

to output to output to output there’s variations over time,

both even within a single run and then from run to run. But

–- and then there is degradation over time… We can show up

in Washington and say, “Can we see that sample again,” and

it would have undergone some degradation, and we don’t know

if it was the same color as it was the day we attached it.

Rosen dep. at 57-58.

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Opposition No. 91119166

“color scarcity’ problem does arise -- the trademark

doctrine of ‘functionality’ normally would seem available to

prevent the anticompetitive consequences”).

Further, applicant argues that “3M Purple is not the

only shade available” citing Brunswick II (Brief at 48).

First, Brunswick II did not set out a rule that a color is

functional if it is the only shade available. Second,

Brunswick II is distinguishable because there was no

indication that outboard engines came in a variety of colors

as a result of the materials used in the manufacturing

process. In contrast, here the record establishes that

coated abrasives come in a variety of natural colors and

these products are often then dyed for a variety of reasons.

Therefore, the situation in R.L. Winston is analogous,

because naturally dark-colored abrasives would then need to

be dyed often with a dark color. As R.L. Winston held:

“It is not so important to categorize the function of the

color, however, as it is to determine whether manufacturers

have a competitive need for using a limited number of

colors. If competitive factors restrict the availability of

color, then color may be functional.” 29 USPQ2d at 1781. A

deep purple color would be one of a small number of dark

colors that would help manufacturers dye their products to

avoid streaking or other imperfections.

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Opposition No. 91119166

We add that the color purple in various shades for

coated abrasives including some that are remarkably close to

applicant’s have already been used by others. Colors of all

types are widely used in the coated abrasive industry

including coated abrasives that have paper or cloth

backings. Color variety is a naturally occurring result of

the manufacturing process and in light of the continuous

changes in the industry, the need for color is likely to

expand. Furthermore, the dying process for coated abrasives

is another variable that affects the color of coated

abrasives. All these factors argue for a competitive need

for the deep shades of purple to remain available for others

in the coated abrasive industry.

Once the opposer in a trademark opposition has made a

prima facie showing of functionality, the burden shifts to

the applicant to prove nonfunctionality.

Where, as here, the opposer in a trademark opposition

has made a prima facie showing of functionality, the

burden shifts to the applicant to show

nonfunctionality… The appropriateness of shifting the

burden in a trademark opposition proceeding is

supported by the recent amendment to Section 43(a) of

the Lanham Act, which shifts the burden of proving

nonfunctionality of unregistered trade dress to

applicant-plaintiff in civil actions for trade dress

infringement, even without a prima facie showing by the

alleged infringer. 15 U.S.C. § 1125(a)(3)(2000).

Valu Engineering, 61 USPQ2d at 1429 (citations and footnote

omitted). See also Textron, Inc. v. U.S. Int'l Trade

Comm'n, 753 F.2d 1029, 224 USPQ 625, 629 (Fed. Cir. 1985)

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Opposition No. 91119166

(“[A]n applicant for trademark protection has the burden to

prove that the design is nonfunctional, once a prima facie

case of functionality is made by the opponent”).

However, as discussed above, we find that applicant has

not sustained this burden of showing that there is no

competitive need for others to use the color purple and that

its deep purple color is not functional. “[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.” Brunswick II, 32

USPQ2d at 1123. In view of the fact that color, especially

color that is dark in nature, both natural and dyed, is a

common and useful feature in the field of coated abrasives,

applicant’s color purple is functional because “exclusive

use of the feature would put competitors at a significant

non-reputation-related disadvantage.” Qualitex, 34 USPQ2d

at 1164.

Decision: The opposition is sustained.

68