John Deere Trailed Nutrient Applicator (photo taken from Court Opinion)
The United States District Court for the Western District of Kentucky Paducah Division enjoined FIMCO from using John Deere & Co.’s trademarked green and yellow.
The Court set forth the elements of trademark infringement: “A party proves trademark infringement by showing (1) that it owns a trademark, (2) that the infringer used the mark in commerce without authorization, and (3) that the use of the alleged infringing trademark ‘is likely to cause confusion among consumers regarding the origin of the goods offered by the parties.’” Coach, Inc. v. Goodfellow, 717 F. 3d 498, 502 (6th Cir. 2013).
LIKELIHOOD OF CONFUSION
The Court then moved on to the eight factors in Frisch’s Restaurants, Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642, 648 (6th Cir. 1982): 1) strength of the senior mark; 2) relatedness of goods and services; 3) similarity of the marks; 4) evidence of actual confusion; 5) marketing channels used; 6) likely degree of purchaser care; 7) the intent of the defendant in selecting the mark; and 8) likelihood of expansion of product lines.
Balancing the factors, the Court held that John Deere & Co. had proved likelihood of confusion concerning “FIMCO’s use of green and yellow on trailed agricultural sprayers and liquid applicators is likely to cause confusion.” More factors such “the relatedness of the goods, the similarity of the marks, evidence of actual confusion, the marketing channels used, and the likelihood of expansion factors all weigh in favor of Deere.” However, “the high degree of purchaser care and the decrease in strength of Deere’s use of green and yellow on trailed agricultural equipment due to multiple other companies’ use of that color scheme throughout the years weigh in FIMCO’s favor.” The Court noted that the likelihood of confusion test applied to state and federal trademark claims, unfair competition, and claims for federal false designation of origin in violation of §1125(a).
OTHER CLAIMS AND DEFENSES
The Court found for John Deere & Co. on the dilution by blurring claim. As to defenses, FIMCO presented the affirmative defenses of acquiescence and estoppel but the Court found that FIMCO had not met the burden of proof.
The permanent injunction stated as follows:
Defendant FIMCO, Inc. and its affiliates, officers, agents, servants, employees, attorneys, and all other persons in active concert or participation with FIMCO are hereby permanently enjoined from using a combination of green and yellow colors in the manufacture, sale, offering for sale, distribution, promotion, marketing, or advertising of FIMCO trailed and wheeled agricultural equipment at any locality within the United States. This injunction does not prohibit the above described persons and entities from using solely the color green or solely the color yellow in connection with agricultural equipment, nor does it prohibit the use of green with another color or yellow with another color. However, it does prohibit the use of any combination of green and yellow together on a piece of equipment.
ABOUT THE AUTHOR:
Julie Tennyson is licensed to practice law in Kentucky, Tennessee, and Georgia and is a registered patent attorney. She focuses her practice on intellectual property, employment, corporate, and litigation. Her email is firstname.lastname@example.org and her phone number is 270-534-5135. Her website is marcumtennyson.com.