On July 6, 2006 Nike filed US trademark application Serial Number 78919236. The description of the trademark is “The mark consists of the color yellow appearing on the sole of the golf club head opposite the clubface. The matter that is shown in broken lines is for placement purposes only and is not part of the mark.”

The application contained the following figure:

On September 16, 2006 the trademark examining attorney refused the application stating:

REFUSED FAILURE TO FUNCTION AS A MARK – SINGLE COLOR
Registration is refused because the proposed color mark, consisting of color applied to the identified goods, is merely an ornamental or decorative feature of such goods and thus would not be perceived as a trademark. Color marks are not inherently distinctive, and cannot be registered on the Principal Register without a showing of acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). The burden of proving that a color mark has acquired distinctiveness is substantial. If applicant continues to prosecute this application, then applicant must also establish that the proposed color mark has become distinctive of the goods, that is, that it has acquired distinctiveness as a source indicator. The “five years’ use statement,” which is sufficient to establish distinctiveness in certain circumstances, would be insufficient in this case. Applicant must provide actual evidence that the proposed mark has acquired distinctiveness for the identified goods. This evidence may consist of the following: (1) examples of advertising and promotional materials specifically promoting the identified color as a mark; (2) dollar figures for advertising devoted to promotion of the specified color as a mark; (3) dealer and consumer statements of recognition of the specified color as a mark; and (4) any other evidence that might establish recognition of the identified color as a mark for the goods. In this case, amendment to the Supplemental Register is suggested.

Nike responded on March 19, 2007 with a 57 page response. The response is very well written and must have persuaded the trademark examining attorney, as the USPTO issued a Notice of Publication on June 6, 2007. The mark will be published for opposition on June 26, 2007.

For those of you that are not familiar with the trademark application process, if the trademark examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. A Certificate of Registration will issue for applications based on use, or a Notice of Allowance will issue for intent-to-use applications.

Therefore, club manufacturers will have 30 days from June 26th to file an opposition, otherwise a Certificate of Registration will soon issue.

Fascinating stuff!

David Dawsey – The Golf Trademark Lawyer