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From high heels to tennis rackets we go, and all in the
name of color. As the red mark war wages on between Christian Louboutin and Yves
Saint Laurent, a recent decision from the Northern District of Georgia
addressed the validity and infringement of a light blue trademark for grip
Unique Sports Products sells Tourna Grip,
a light blue, tennis racket grip tape used by professional tennis
players. Unique, which received a trademark for the light blue color, accused Ferrari
Importing Company of trademark infringement. Ferrari markets racket grip tape
in a variety of colors, including light blue.
In Unique Sports
Prods. v. Ferrari Importing Co., 2011 U.S. Dist. LEXIS 124801 (N.D. Ga.
Oct. 27, 2011) [enhanced version available to lexis.com subscribers], the
court entered judgment in favor of Unique on Ferrari's affirmative defenses
that the trademark was invalid and unenforceable. However, Ferrari was entitled
to judgment on Unique's claim for infringement.
Regarding the validity of Unique's light
blue trademark, the color's non-functionality had already been determined by the court. Thus, the issue to be determined was whether the color had secondary meaning. Balancing all the
factors, the court held that Light Blue Tourna Grip had acquired secondary
meaning. The factors considered include:
However, balancing the seven factors in Welding Servs. v. Forman, 2007 U.S. App.
LEXIS 29184 (11th Cir. Ga. 2007) [enhanced version / unenhanced version available from lexisONE Free Case Law], the
court held there was little likelihood of confusion between Ferrari's gauze
tape and Light Blue Tourna Grip. While light blue was distinctive, Light Blue
Tourna Grip was not similar to Ferrari's gauze tape, which had a distinguishable
shade, texture and appearance. Also, overgrip tape (Tourna Grip) and gauze tape
(Ferrari) were found to be dissimilar products.
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