Watch makers face off over trademark dispute. SOLID 21 v. BREITLING

A trademark is something that consumers associate with the manufacturer of a product. Traditionally a trademark is thought of as a symbol, word or phrase, but anything that signals to consumers the identity of the manufacturer of a product can be eligible for trademark protection. In the United States trademark rights are derived from the use of the trademark in commerce. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark but registration is not necessary for the trademark user to be granted a claim to the trademark.

The first person to use a trademark in commerce is considered the senior user of a trademark. People who subsequently use a trademark are considered junior users. If a junior user uses a trademark in a way that leads to consumer confusion about the identity of the producer of a product that can be considered trademark infringement. The senior user of a trademark can file a lawsuit to stop trademark infringement with a lawsuit and to get monetary damages for trademark infringement which has occurred.

The strength of the trademark is an important component in determining whether trademark infringement has occurred, because a likelihood of consumers confusion is the definition of trademark infringement. A trademark is “strong” when it has acquired secondary meaning, or if it is arbitrary, fanciful or suggestive. A trademark is “weak” if it is descriptive and has not acquired sufficient secondary meaning. The owner of a weak mark will have difficulty proving likelihood of confusion.

A descriptive trademark is a word (or words) that merely describes a product or that contains ingredients or attributes that are too weak to function as a trademark. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream or SALTY for anchovies. The owner of a descriptive trademark must demonstrate the trademark has acquired secondary meaning to successfully claim it as a trademark. In order to establish a secondary meaning for a term, a trademark owner”must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.” The burden of proof to establish secondary meaning rests at all times with the trademark owner.

An example of a trademark which at one time might have been considered descriptive, but has now acquired secondary meaning is SOLID 21, INC., v. BREITLING U.S.A. INC., 3:19-cv-00514 (D. Conn. 2019) Both parties in this case are manufacturers of luxury watches. Both manufacturers produce watches made from a type of gold known as rose gold. Rose gold, increasingly popular as a choice in specialized jewelry, is a gold and copper alloy. Because roses are typically thought of as feminine, there is a perception that male consumers are not interested in jewelry made from rose gold.

In 1989 the plaintiff began branding watches made from rose gold, intended for male consumers, as RED GOLD. The plaintiff’s claim to the RED GOLD trademark was registered with the United States Patent and Trademark Office in 2003 for products such as watches and jewelry. In 2009 the plaintiff filed the appropriate paperwork to made its trademark registration incontestable.

In 2017 and 2018 the defendant posted several advertisements which promoted watches made with red gold. The defendant used the term red gold to describe the finish of the metal used to make the watch.

The plaintiff filed a trademark infringement suit against the defendant in 2019. The plaintiff feels that the defendant’s use of the term red gold to describe the metal from which the defendants watches are made, will lead to consumer confusion between products made by the plaintiff and the defendant. While the plaintiff’s position may seem over reaching, it appears that they are within their rights. The plaintiff has registered the trademark and filed the appropriate paperwork to make the trademark incontestable. The defendant will have their work cut out for them if they attempt to get the trademark invalidated on the grounds that RED GOLD is merely descriptive.

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