A sporting goods manufacturer could proceed with claims that a competitor infringed the manufacturer's registered trademark consisting of the light blue color of its tennis racket overgrip tape products, the federal district court in Atlanta has decided. There were genuine issues of material fact as to the validity of the complaining manufacturer's mark and the likelihood of confusion created by the competitor's use of light blue tape.

Functionality

The court rejected the competitor's contention that the manufacturer's mark was functional. The light blue color of the overgrip tape was not functional under the traditional test because there was no evidence that it was essential to the use or purpose of the tape or that it affected the tape's cost or quality, the court said.

The competitor asserted that, after it darkened the blue color of its own overgrip product in compliance with a consent judgment in previous trademark litigation between the parties, two of its customers complained that the darker tape was less absorbent. The competitor, however, presented no direct evidence that the color of the grip tape affected its absorbency.

In addition, the competitor did not demonstrate a competitive necessity to use a light blue color for the tape, according to the court. The popularity of light blue grip tape did not establish that it was functional as a matter of law. No evidence was presented to support the contention that consumers preferred light blue because it coordinated with other tennis accessories.

Secondary Meaning

There was conflicting evidence as to when the competitor began selling light blue overgrips, which was relevant to the question of whether the manufacturer's mark had acquired secondary meaning by the time the competitor began selling its allegedly infringing products. The competitor alleged that it started selling light blue grips as early as 1988, well before the manufacturer registered its mark, in 2001. In prior litigation, the manufacturer had sued the competitor for selling light blue grip tape in 1999; thus, the manufacturer was not entitled to rely on a presumption of secondary meaning based on its registration, the court said.

The manufacturer began selling its light blue grip tape in 1977. Before 1999, more than 50 million light blue grip products had been sold by the manufacturer, and the product had been used by prominent professional tennis players. The manufacturer had expended significant resources promoting its light blue mark. Although a consumer survey submitted by the manufacturer was conducted in 2002, it provided some evidence that the public identified light blue overgrip tape with the manufacturer.

Weighing only slightly against a finding of secondary meaning was evidence that the manufacturer had allowed a third-party sporting goods company to sell light blue grip tape. Therefore, there was sufficient evidence to support a finding that the mark had acquired distinctiveness prior to the competitor's date of first use, in the court's view.

Likelihood of Confusion

With regard to the likelihood of confusion, the only factor favoring the competitor was the lack of actual confusion evidence, which was not dispositive, the court said. The colors used by the manufacturer and the competitor were not identical, but they were similar. Their products were directly competitive, which weighed in favor of a likelihood of confusion finding. The parties used similar advertising strategies and sold their goods in the same types of stores and on the Internet.

Limited third-party use of a light blue color for similar products did not weigh in favor of the competitor, according to the court. The manufacturer contended that it had vigorously and successfully defended its exclusive use of the specific shade of light blue covered by its trademark registration. The competitor had notice of the similarity between the colors because the manufacturer had filed and settled a previous suit against the competitor alleging similar infringement of its light blue mark.

Scope of Prior Injunction

The complaining manufacturer could not proceed with a claim that the competitor violated a final order in a prior lawsuit that prohibited the competitor from using a specific light blue color for tennis racket overgrip tape products, the court determined. The final order defined the trademark covered by the injunction as any overwrap grip material that is of a blue color lighter than the color designated as 293(c) in the Pantone Color Selector and that has a speckled, chamois surface texture. Although the manufacturer alleged that the competitor had sold overgrips that were light blue, it presented no evidence that the competitor's products were also speckled and had a chamois surface texture.

Unique Sports Products, Inc., ND Ga., ¶61,752.