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Intellectual Property

More Fighting Over Color: This Time It’s Not Red Soled Shoes but Light Blue Tennis Tape

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 tape.

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 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:

  • Unique and its predecessor sold Light Blue Tourna Grip since 1977;
  • Unique spent $3 million on advertising between 1977 and 1999;
  • Unique emphasized Tourna Grip's light blue color, advertising Tourna Grip as "the blue Tourna Grip," "The original blue super absorbent non-slip grip," "the original blue grip," "Blue Tape," "the original light blue grip," and "the light blue grip that does not slip."; and
  • Numerous professional tennis players endorsed Tourna Grip, including Pete Sampras, Andre Agassi, James Blake, Venus Williams, Maria Sharapova, and the Bryan Brothers.

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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