A Gun of a Different Color


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Henry Bowman
June 20, 2006, 11:13 AM
As some of you may know, I am a patent, trademark, copyright (intellectual property) attorney in my "real" life. A while back, I wrote some articles about instances where the world of firearms (and related things) and IP law occasionally intersect. Here is an orphan article that was not picked up by any publication. The text is below. The attached PDF file has pretty color pictures. ;)

Your feedback will be appreciated and I will try to answer any questions raised (within reason, given my slow typing fingers).

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A Gun of a Different Color

By Glenn D. Bellamy

If you have done any weapon-retention or QCB training, you are probably familiar with training gear (handguns, knives or other items) made of brightly-colored resin. You may have called it a “blue gun” or a “red gun,” but did you think that the color indicated the brand of the product?

Armament Systems and Procedures, Inc., more commonly known as ASP, makes a full line of non-functioning resin training equipment in the shape of common guns and other gear. Each of its models are exacting copies of the real guns and not “generic” pistol, revolver, or long gun shapes. ASP always makes their simulated weapons and gear red, rather than some other color, and wants to own red to the exclusion of all other competitors. The most common color used by others is blue.

Recently, the U.S. Patent & Trademark Office (PTO) refused to give ASP a trademark registration for the color red when used on a training gun or other gear. A trademark registration for the color red would have meant that ASP would be on its way to having the exclusive right to make red training gear.

A trademark can be any word, symbol or device used to indicate the source of a product or service – i.e., a particular brand. Combinations of colors and particular color shapes, usually called “trade dress,” have been recognized as trademarks for a long time. For example, Remington owns a trademark for an ammunition package design in which the upper half is green. A particular color applied to the entire product can be a trademark in some cases, such as Owens-Corning pink fiberglass insulation. But for a color to be protectable as a trademark, the color has to be recognized by consumers as representing a particular brand of the product. Also the color must not serve a primarily functional purpose.

For more than a decade, ASP has followed a strategy of protecting and expanding the scope of its trademark and trade dress rights. Back in 1994, ASP began by registering the words RED GUN as a trademark (think “RED GUN brand”) for simulated gear other than firearms such as knives, flashlights or radios, claiming that the name had been used as a trademark since 1991. The first registration was on the Supplemental Register – officially a recognition by the PTO that it had not yet achieved trademark status but was capable of doing so. The word “gun” was disclaimed, meaning that no claim was made to an exclusive right to use that word apart from the combination of both words together. In 2000, this registration was upgraded to the Principal Register, meaning that the PTO recognized that RED GUN had acquired trademark status for the non-firearm items on which it had been used for several years. Curiously, this time the word “red” – and not “gun” – was disclaimed.

Finally, in 2003, the words RED GUN were allowed on the Principal Register for training implements in the shape of firearms. This time, only the word “gun” was disclaimed, meaning that others could use the word “gun” in their brand of simulated firearm without a problem. The PTO Examiner may or may not have fully understood the nature (and color) of the products on which this trademark is used.

This brings us to ASP’s latest intellectual property strategy. More recently, ASP applied to register the color red as its trademark for a non-specific shape of a gun on the Supplemental Register. In the drawing filed to show the claimed mark, the vertical lining indicates color (red) and the dashed outline indicates an exemplary, but non-limiting, shape to show where the color is located on the product – in this case, all over.

The PTO Examiner refused the registration, and was affirmed on appeal, on the ground that the color was primarily functional as used on ASP’s products and, therefore, incapable of becoming recognized as a trademark. ASP asserted that the color red is not essential to the use or purpose of its products, nor does it affect their cost or quality. ASP argued that other bright colors are available to competitors and, consequently , there is no competitive need to use the color red.

The Examiner contended that that red is commonly applied to guns and mock guns to indicate that they are nonfunctioning, such as training tools or toys, and that there is a prevalent past practice in the industry using the color red for this purpose. He cited several websites and articles showing the use of red for mock weapons, statutes requiring the use of bright colors including red, and even to a patent owned by ASP.

ASP is a pioneer in the field of training guns and even has a 1995 U.S. Patent on “a method for training law enforcement personnel in the proper manual handling and manipulation other than aiming and firing of a specific, standard issue sidearm weapon.” This patented training method includes, among others, the steps of making a mold directly from the specific sidearm, casting a non-metallic mock weapon from the mold in the precise size and shape of the specific sidearm, and then using it in training exercises. The patent, never known to have been enforced, came back to haunt ASP. In the patent, they state that the mock weapon should be made “a bright distinguishing color” and that “red pigmentation is the color of choice.”

In view of all this evidence, the PTO concluded that the color red primarily serves a functional purpose. As such, there is a competitive need for the color red to remain available for use by others in the trade. To give ASP exclusive use of the color would put competitors at “a significant non-reputation-based disadvantage.” So ASP was denied registration for the overall red color, even on the Supplemental Register.

A few words of caution: After a trademark has been on the Principal Register for five years, it acquires “incontestable” status, meaning that it becomes conclusive proof of the owner’s exclusive right to use the trademark and can be challenged only on very limited grounds. This milestone has already passed for the “RED GUN” word trademark on simulated training gear other than firearms and the clock is ticking toward 2008 for the registration relating to mock firearms. The PTO decision only determined whether the claimed color trademark could be registered. It does not determine whether ASP has some common law rights to the color red, though the PTO decision carries strong persuasive value. Presumably, ASP could not, at this point, prevent a competitor from making a simulated training gun that is red. Likewise, again presumably, they could not stop the competitor from advertising both that it is “RED” and that it looks like a “GUN”. This is known as “descriptive fair use” and is protected even if it may cause consumer confusion.

But crimson competitors best beware. Exactly where ASP’s trademark rights begin and end with respect to the color red seems to lie in something of a legal “pink area.”

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Glenn D. Bellamy is a patent, trademark and copyright attorney, as well as an avid shooter, with the firm of Greenebaum Doll & McDonald PLLC in Cincinnati, Ohio. For more information, he can be contacted at 513-455-7625 or gdb@gdm.com.


Edited for formatting.

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Fly320s
June 20, 2006, 08:29 PM
Nice article. Easy for me to understand; and I hate lawyer-talk. :D

Bummer to me... I was going to trademark plaid.

Henry Bowman
June 20, 2006, 09:19 PM
Easy for me to understand; and I hate lawyer-talk. Thanks. That was the goal -- not an article for lawyers but for the gun industry/culture.
I was going to trademark plaid.Lets talk. ;) Acually, it would be more distinctive (and less "functional," therefore more protectable) than red.

sm
June 20, 2006, 09:45 PM
Good thing you want "plaid".

I thing some lawyer wants to do a Hawaiian Shirt Pattern...
Matches his office dress code so I heard...

*smirk*

Seriously- Well done and easy to read. Most informative and educational.

Thanks Mr. Bowman.

Steve

Henry Bowman
June 20, 2006, 11:03 PM
It will be a new DuraCoat pattern: "Magnum PI Camo" :cool:

gvass
June 21, 2006, 09:39 AM
"Here is an orphan article that was not picked up by any publication. "

Great article, nice practical view about US patent laws.

Do you want to publish it?

brickeyee
June 21, 2006, 09:42 AM
I thought there was a general rule that patents would not be issued for colors?
Even trying to restrict use of a color as a trade mark has been a problem for many years (ask Owens Corning about pink insulation).
Why would the denial be surprising at all?

Henry Bowman
June 21, 2006, 10:14 AM
Do you want to publish it?Yes, to an audience (of non lawyers) who might be interested. If written for lawyers, I would approach it very differently.

I thought there was a general rule that patents would not be issued for colors?
Even trying to restrict use of a color as a trade mark has been a problem for many years (ask Owens Corning about pink insulation).You may be confusing patents and trademarks here. Yes, getting a patent on simply a color is extremely unlikely (I have learned never to say never in this business). Having a single, over-all color recognized as a trademark (rather than a combination of colors or a color in a particular shape or position) is unusual and requires that it truly be recognized as an indicator of the source (brand) of the product, not just as decoration, function, or fashion (aesthetic functionality).

Nontraditional trademarks are gaining in popularity. Color, shape, sound and even smell can be protected. I have thought that an ammo maker could make its burned powder smell like strawberry or lemon as a way of recognizing the brand of the ammo, for example, though I'm rartial to just good old powder and Hoppe's No.9). Some distictive smells (like Wolf ammo) are a result of the functional formulation and are not protectable.

Shipwreck
June 21, 2006, 10:43 AM
Hell, Springield trademarked "racegun" (the term) a few years ago - this trademark stuff can get out of hand sometimes...

Optical Serenity
June 21, 2006, 10:51 AM
Good article bro.

Henry Bowman
June 21, 2006, 11:04 AM
Hell, Springield trademarked "racegun" (the term) a few years ago - this trademark stuff can get out of hand sometimes...Yes, and trademarks can come and go, depending on consumer perception. Asprin, escalator, yo-yo, etc. used to be trademarks. Other words that are descriptive can become distinctive of a particular brand over time (usually with considerable advertising expendature).


Thanks, OS.

slzy
June 21, 2006, 02:14 PM
coupla years ago a phone company had a commercial of a black and white street scene. as the commercal progressed,items would turn green. i was watching with my gf,who cares nothing about motorcycles whatsoever.nontheless,she thought it was going to be a kawasaki ad.this is about as close a defacto trademark on a color i know.

armedandsafe
June 21, 2006, 08:05 PM
Reminds me of the IBM "BLUE" argument of many years ago. They lost so many times it became ridiculous, but kept on trying.

Pops

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