Brunswick Corporation v. British Seagull Limited

35 F.3d 1527 (1994)

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Nature of the Case

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Facts

P has manufactured and sold marine outboard engines for over thirty years. In 1962, Mercury introduced its first all-black outboard engine. P has spent over $100 million in advertising and generated $ 3billion in sales of its outboard motors. Some of the ads focused on its 'all black' color. British Seagull Ltd. (D), Sears, Roebuck & Co., and Outboard Marine Corp. also produced black engines or dark engines virtually indistinguishable from black. P filed an application to register the color black for outboard engines on the Principal Register. P claimed the color had acquired secondary meaning and served as a trademark for P's outboard engines. The Examining Attorney allowed the registration. Ds filed Opposition Nos. 80,900 and 80,901. The color black was deemed to be the color black as it was not nonfunctional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture. It was determined that black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The Board concluded that the color black, applied to the engines, is de jure functional because of competitive need. The Board also found that P's use of black on outboard engines was not exclusive. Several competitors in the outboard market had engines colored black or dark colors easily perceived as black. P contributed to third party use of black on outboards by supplying an all-black engine to an independent retailer for resale to the general public. The color was held not to be registrable. P appealed.