No Fraud in Registering Trademark for the Color Blue
The District Court of Minnesota found that 3M did not commit fraud on the USPTO in obtaining a trademark on the color blue. 3M Co. v. Intertape Polymer Group, Inc., 423 F.Supp.2d 958 (D. Minn. 2006).
3M sued Intertape for trademark infringement. Intertape asserted numerous defenses, including a claim that 3M committed fraud by representing to the USPTO that it had "substantially exclusive" use of the blue tape mark. At the time, there were 10 other users of the mark, but 3M commanded 85% - 93% of the market share. In rejecting Intertape's argument, the court relied on the TTAB's ruling that a party claiming fraud on the USPTO is under a heavy burden. Marshall Field & Co. v. Mrs. Fields Cookies, 25 U.S.P.Q.2d 1321 (TTAB 1992). The phrase "substantially exclusive" was also the exact phrase the TTAB found not fraudulent. Id.
This case will be interesting to watch as it proceeds to trial. The court denied Intertape's motion for summary judgment because issues of fact exist. The following issues will proceed to trial: functionality, secondary meaning, estoppel by acquiescence, and laches.
