Brunswick Corp. v. British Seagull Ltd.
35 F.3d 1527 (1994)
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Rule of Law:
A color cannot be registered as a trademark if it is de jure functional, meaning its use provides a significant non-trademark advantage that is essential to effective competition.
Facts:
- Since 1964, Mercury Marine (a division of Brunswick Corporation) has exclusively manufactured and sold black outboard engines.
- Mercury invested over $100 million in advertising, with some advertisements specifically highlighting the 'all black' color of its engines.
- During the same period, competitors including British Seagull Ltd. and Sears, Roebuck & Co. also manufactured and sold black or nearly-black outboard engines.
- Evidence showed that prospective purchasers of outboard motors desire the color black for two main reasons.
- First, black is color-compatible with a wider variety of boat colors than other colors.
- Second, objects colored black appear smaller than they do when painted in lighter or brighter colors, a desirable aesthetic for boat owners.
- Mercury Marine filed an application to register the color black as a trademark for its outboard engines.
- Mercury claimed the color had acquired secondary meaning, identifying the company as the source of the engines.
Procedural Posture:
- Mercury Marine filed an application with the U.S. Patent and Trademark Office (USPTO) to register the color black for outboard engines.
- The USPTO Examining Attorney allowed the registration.
- British Seagull Ltd. and Outboard Marine Corp. filed oppositions to the registration application.
- The Trademark Trial and Appeal Board (Board) sustained the oppositions, refusing registration on the grounds that the color black was de jure functional and had not acquired secondary meaning.
- Mercury Marine, as appellant, appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.
- The opposers, as appellees, filed a cross-appeal regarding certain evidentiary rulings made by the Board.
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Issue:
Is the color black, when applied to outboard motors, de jure functional because it provides competitive advantages unrelated to source identification, thus precluding trademark registration?
Opinions:
Majority - Rader, Circuit Judge
Yes. The color black is de jure functional when applied to outboard motors and is therefore not registrable as a trademark. A product feature is de jure functional, and thus cannot be trademarked, if it is essential to the use or purpose of the article or if it affects the cost or quality in a way that hinders effective competition. The court distinguished between de facto functionality (a feature has a function) and de jure functionality (a product is in a particular shape or color because it works better that way). The core of the de jure functionality analysis is the effect on competition. Here, the court found a competitive need for other manufacturers to use the color black because it offers two significant non-trademark advantages: color compatibility with a wide range of boats and the ability to make the engine appear smaller. Unlike the pink color for insulation in In re Owens-Corning, which served no utilitarian purpose, the color black serves non-trademark functions that are important to consumers, and granting Mercury a monopoly on it would hinder competition. Evidence of distinctiveness or secondary meaning is irrelevant when a feature is found to be de jure functional.
Analysis:
This decision solidifies the principle that functionality is a bar to trademark registration, even for a feature as seemingly aesthetic as color. It clarifies that the key inquiry for 'de jure' functionality is not whether a feature is strictly utilitarian in a mechanical sense, but whether protecting it as a trademark would hinder legitimate competition by appropriating a feature that competitors need to use. By focusing on 'competitive need,' the court sets a precedent that makes it difficult to trademark colors that have well-known aesthetic or practical advantages in a particular market. This case refines the functionality doctrine by subsuming older concepts like the 'color depletion theory' and 'aesthetic functionality' into a single, competition-based analysis.
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