White Consoli-dated Industries, Inc.v.Royal Appliance Mfg. Co.

Trademark Trial and Appeal Board

May 31, 2000

No. 91107081 (T.T.A.B. May. 31, 2000)

Hearing: August 19, 1999 Paper No. 52
TEH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/31/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
White Consolidated Industries, Inc.
v.
Royal Appliance Mfg. Co.
_____
Opposition No. 107,081
to application Serial No. 74/156,648
filed on April 12, 1991
_____
Anthony L. Fletcher of Fish & Richardson for White Consolidated
Industries, Inc.
Patrick R. Roche of Fay, Sharpe, Beall, Fagan, Minnich & McKee
LLP for Royal Appliance Mfg. Co.
______
Before Walters, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Royal Appliance Mfg. Co. filed an application under Section
2(f) of the Trademark Act to register the color red as shown
below for "hand-held vacuum cleaners," alleging dates of first
Opposition No. 107,081
2
use and first use in commerce of September 1984.1
The application indicates that the mark consists of the
color red as applied to the hand-held vacuum cleaner product,
that the drawing is lined for the color red and that applicant
seeks to register "red" without limitations to a product
configuration.2 Registration to applicant was finally refused
under Sections 1, 2 and 45 of the Trademark Act on the grounds
that the asserted mark is de jure functional and that the
evidence of acquired distinctiveness is insufficient to show that
the color red is recognized as an indicator of source in
applicant. Applicant then appealed.
The Board (in an unpublished opinion) reversed the refusal
to register on both grounds, finding that the color red as
applied to hand-held vacuum cleaners was not shown to be de jure
functional and that applicant had established that the color red
had acquired distinctiveness as a trademark.
Following publication of the mark, this opposition was filed
by White Consolidated Industries, Inc. Briefs were filed and an
oral hearing was held.
In the notice of opposition (as amended), opposer alleges
that the parties are competing manufacturers and sellers of
vacuum cleaners, including hand-held vacuum cleaners; that
applicant has not met the burden of demonstrating secondary

1 Serial No. 74/156,648 filed April 12, 1991.
2Applicant is the owner of Registration No. 1,761,093 for the
configuration of the hand-held vacuum cleaner in the color red.
Opposition No. 107,081
3
meaning of the color red as applied to the identified goods; that
applicant "has never sold a hand-held vacuum the sole exterior
color of which is red"; that the color red is functional in that
its exclusive appropriation by one competitor would significantly
deplete the colors available to other manufacturers of vacuum
cleaners; that competitors of applicant, including opposer, have
made and sold vacuum cleaners the basic color of which can be
said to fall within "the color red"; that red is the color of
choice for marketers striving for visual impact as well as a
"communicative function" in marketing and should be available to
reflect changing consumer trends.
Applicant admitted that the parties are competing
manufacturers and sellers of vacuum cleaners and denied the
remaining salient allegations.
The record in this case consists of the pleadings, the
application, evidence made of record by notice of reliance,
and testimony (with exhibits) taken by each party.
Applicant has submitted the testimony (with exhibits) of
Richard Farone, applicant’s Director of Marketing and Product
Development; and the expert testimony of Daniel McCafferty,
Director of Client Services for National Market Measures, Inc.,
the company which conducted the survey of record in this case.
Applicant has also submitted the declarations of three non-
party witnesses: Tony Busch, buyer for Cotter & Company (True
Value hardware stores); Camille Thomas, Senior Buyer, Target; and
Dennis Dorn, Senior Buyer, K-Mart Corporation, all attesting to
Opposition No. 107,081
4
recognition of the color red as a mark originating with
applicant.3
Opposer has submitted the testimony and exhibits of Bradley
L. Hoare, opposer’s Director of Product Planning; and the expert
testimony (with exhibits) of Phyllis J. Welter, President of
Survey Counsel Inc.
I. PRELIMINARY MATTERS
Before considering the merits, a number of procedural issues
need to be addressed. First, pursuant to a discussion which took
place during the oral hearing, applicant, on August 30, 1999,
filed a motion to amend the application to substitute the
following description of the mark: "The mark consists of the
color red (PMS 186) as applied to the hand-held vacuum cleaner
product."4 Opposer has agreed to the amendment. At the same
time, opposer emphasizes that the amendment resolves only one
issue in the case, that is, the "color depletion" argument as set
forth in "point 2" of opposer’s brief. The amendment is
accepted, and we consider the "color depletion" argument in

3 The parties filed a joint stipulation on November 2, 1998, that the
testimony of these witnesses may be submitted in the form of
declarations by such witnesses.
4 "PMS 186" identifies a particular shade of red within the Pantone
Matching System color system.
Opposition No. 107,081
5
opposer’s brief to be withdrawn. In view of the amendment, all
further references in this decision to "red" or "the color red"
as applied to applicant’s product are to the specific color PMS
186 on the Pantone scale.
There are also several evidentiary matters to resolve.
First, applicant filed a notice of reliance on its own answers to
certain interrogatories and excerpts of the discovery deposition
(with exhibits) of its own witness, Mr. Farone. Opposer filed a
motion to strike the notice of reliance, claiming that applicant
has violated Trademark Rule 2.120(j)(1), (4) and (5), in seeking
to rely on this evidence. Applicant maintains that Rule 2.120
permits applicant to rely on its additional responses to
interrogatories and the additional portions of Mr. Farone’s
deposition in order to correct, clarify or rebut the
interrogatory responses or the parts of the deposition relied on
by opposer.
A party may introduce, by notice of reliance, its own
portions of a discovery deposition or its own interrogatory
responses to the extent that those portions or responses should
"in fairness be considered so as not to make misleading what was
offered by the inquiring party." (Emphasis added). See Rule
2.120(j)(4) and (5). In addition, the rule requires that a party
Opposition No. 107,081
6
explain in the notice of reliance why there is a need to rely
upon each of the additional discovery responses.
Applicant, in its notice of reliance, only addressed the
general relevance of the matter it is seeking to introduce.
Applicant did not attempt to explain, in accordance with
2.120(j)(4) or (5), why it needed to rely on the additional
matter until it filed its response to opposer’s motion to strike.
Even then, applicant did not sufficiently explain how the
responses offered by opposer would otherwise be misleading
without consideration of the additional responses. We find that
while the additional responses may be relevant to the issues in
this case or even specifically related to the portions sought to
be introduced by opposer, the originally-submitted responses are
not misleading. Moreover, applicant has not asserted that the
responses are in fact misleading. Opposer’s motion to strike is
accordingly granted.
As a further matter, applicant filed a motion to strike
certain portions of Ms. Welter’s testimony under Fed. R. Civ. P.
37(c)(1). Specifically, applicant seeks to strike those portions
of her testimony which critique the methodology used to conduct
applicant’s survey and the tabulation of certain results of the
survey. Applicant claims that those portions of her testimony
fall "beyond that contained in her expert report" in violation of
Opposition No. 107,081
7
Fed. R. Civ. P. 26(a)(2)(B). Applicant claims that it was
prejudiced by the "surprise" expert testimony, as it was never
apprised of these "opinions" until they were elicited by
opposer’s counsel during Ms. Welter’s deposition.
Certain provisions of the federal disclosure rules,
including the rules which require expert reports, are not
applicable to Board proceedings. See "Effect of December 1, 1993
Amendments to the Federal Rules of Civil Procedure on Trademark
Trial and Appeal Board Inter Partes Proceedings," 1159 TMOG 14
(February 1, 1994). While expert witnesses are required to be
identified in Board proceedings, there is no requirement for a
written report as to the subject matter of their proposed
testimony.5 In any event, we find that Ms. Welter testified in
areas sufficiently related to the information disclosed in the
report. Moreover, it is difficult to accept applicant’s claim of
prejudice as we note that applicant did not object to the
testimony during the deposition and, in fact, proceeded to cross
examine the witness on those "additional" opinions at trial.

5 See, for example, TBMP § 419.
Opposition No. 107,081
8
Applicant’s motion to strike that portion of Ms. Welter’s
testimony is accordingly denied.6
II. MERITS OF THE CASE
Under certain circumstances, color alone may serve as a
trademark. Qualitex Co. v. Jacobson Products Co., Inc., 115 S.Ct.
1300, 34 USPQ2d 1161 (1995). Color is registrable if it is not
de jure functional and if it has acquired distinctiveness in
connection with the identified goods. Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); and
Brunswick Corp. v. British Seagull Ltd., 35 F.2d 1527, 32 USPQ2d
1120 (Fed. Cir. 1994), cert. denied, 115 S.Ct. 1426 (1995).
A. Whether the color red PMS 186 is de jure
functional for hand-held vacuum cleaners.
A product feature, including color, is de jure functional
"’if it is essential to the use or purpose of the article or if
it affects the cost or quality of the article,’ that is, if

6 In addition, Applicant filed a motion under Trademark Rule
2.120(j)(2) to strike a substantial portion of opposer’s "Exhibit P" to
Mr. McCafferty’s testimony deposition. That exhibit consists of the
entire discovery deposition of Mr. McCafferty, a nonparty witness. The
motion is uncontested by opposer and in any event appears to be well-
taken. Accordingly, opposer’s Exhibit P is stricken except for the
portion of the deposition (pages 46 and 47) which was apparently used
by opposer for impeachment purposes. See Trademark Rules 2.127(a) and
2.120(j)(2).
Opposition No. 107,081
9
exclusive use of the feature would put competitors at a
significant non-reputation-related disadvantage." Qualitex Co.
v. Jacobson Products Co., supra, citing Inwood Laboratories,
Inc., 456 U.S., at 850, n. 10.
Opposer’s Director of Product Planning, Mr. Hoare, concedes
that the color red has nothing to do with the performance, cost
or efficiency of hand-held vacuum cleaners. (p. 50 Hoare). Thus,
the determination of de jure functionality turns on whether
appropriation of the color red, PMS 186, by one party for hand-
held vacuum cleaners would otherwise put competitors at a
significant competitive disadvantage.
Opposer argues, in this regard, that other manufacturers of
hand-held vacuum cleaners have a competitive need to use the
color red and that, for many years, manufacturers, including
applicant, have chosen red because that color calls attention to
the product in a marketing environment. However, as indicated
below, the record in this case does not show that there is any
competitive need for the particular color applicant seeks to
register for hand-held vacuum cleaners to remain in the public
domain.
Opposer refers to one of applicant’s brochures which
contains the statement made by John Balch, former President of
applicant, that red was chosen for Dirt Devil hand-held vacuum
Opposition No. 107,081
10
cleaners because it "jumps out at you...[i]t’s a hot, action
color." (Exh. 19 to Farone test). In addition, opposer’s
witness, Mr. Hoare, has testified that "...red is always nice to
use if...you want your product to really stand out on the shelf,
because it attracts the eye. It’s a bold color." (Hoare test.
p. 37). According to Mr. Hoare, "...if all of a sudden there was
a phase where red became very popular...this would put us at an
unfair disadvantage if we did not have the ability to use red and
it became popular over an extended period of time." (Id. p.38).
However, the concept of de jure functionality based purely
on an aesthetic property of the goods has been rejected.
Brunswick Corp. v. British Seagull Ltd., supra, citing In re DC
Comics, Inc., 689 F.2d 1042, 215 USPQ 394 (CCPA 1982).
Instead, the aesthetic property must be shown to result in some
competitive advantage in the marketplace. As stated by the Court
in L.D. Kichler Co. v. Davoil Inc., 192 F.3d 1349, 52 USPQ2d 1307
(Fed. Cir. 1999), "[m]ere taste or preference cannot render a
color--unless it is ’the best, or at least one, of a few superior
designs’--de jure functional." [Citing In re Bose Corp., 772 F.2d
866, 872, 227 USPQ 1, 6 (Fed. Cir. 1985). In other words,
merely because a red color may have certain visual appeal when
applied to hand-held vacuum cleaners does not mean that the color
red is de jure functional when applied to those goods.
Opposition No. 107,081
11
This case is unlike the Brunswick case, supra, in which
black outboard engines were found to be more marketable because
the color black is compatible with other boat colors and black
makes the engines appear smaller; or, for example, the case of
Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 217 USPQ 252 (SD
Iowa 1982), aff’d, 721 F. 2d 253 (CA8 1983), in which the Court
found a competitive need for the color green for farm machinery
in view of the color’s compatibility with other farm equipment.
In the case before us, there is no evidence of any visual
advantage which is unique to either the color red, in general, or
red PMS 186, in particular, for hand-held vacuum cleaners. This
is not a situation where the color of the product is important to
a consumer for its visual properties as it would be in such
products as carpeting, living room furniture or clothing. We
have no evidence that consumers have a need, or even a desire, to
own a hand-held vacuum cleaner in any particular color. Some
vague expectation that the color red might become "popular" at
some unidentifiable point in the future is far from sufficient to
demonstrate the existence of a "significant" competitive
disadvantage. Thus, while the testimony and evidence indicates
that red may be a desirable or popular color for products in
general, opposer has not established that red, in general, or PMS
186, in particular, offers a significant competitive advantage
for hand-held vacuum cleaners.
Opposition No. 107,081
12
Opposer’s evidence that other manufacturers, as well as
opposer, have produced hand-held vacuum cleaners in the color red
is not persuasive of a different result. While the evidence
indicates some uses of red for hand-held vacuum cleaners by
different manufacturers over time, the evidence fails to
establish that the nature or extent of use by any company other
than applicant of any shade of red for hand-held vacuum cleaners.
The only testimony of any alleged third-party use of a red
color for hand-held vacuum cleaners comes from Mr. Hoare. First,
Mr. Hoare was unable to establish, with any degree of certainty,
that hand-held vacuum cleaners in a red color were ever actually
sold or even put on the market by any of the third-party
companies referenced by opposer. For example, Mr. Hoare
testified as to the use of the color red on a product identified
as a Remington Vic Vac. However, on cross-examination, Mr. Hoare
essentially admitted that he would not classify the Vic Vac as a
hand-held vacuum cleaner. Moreover, under further cross-
examination, Mr. Hoare responded to questions regarding such
third-party use as follows: (Hoare test. p. 48).
Q. ...this Panasonic, is it your testimony that you can’t
date this product?
A. I do not see a date on this catalog sheet.
Q. Do you know how long this [Panasonic] product has been
in the marketplace or even if it still is in the
marketplace?
Opposition No. 107,081
13
A. I can’t answer that.
Q. ...could you take a look at the Singer Power Brush hand
vac...Do you know how long that’s been in the
marketplace?
A. No, I do not.
As to opposer’s own use, Mr. Hoare states that opposer
produced its "Corvette" hand-held vacuum cleaner in a red color.7
However, we note that the product was not sold in that color
until 1992, long after applicant’s first use of red PMS 186 on
hand-held vacuum cleaners in 1984, and opposer produced a red
product only until 1997.8 (Hoare test. pp. 39 and 47). In fact,
Mr. Hoare has testified that opposer’s company does not currently
manufacture any hand-held vacuum cleaners in the color red. The
lack of demonstrated third-party use of a red color on hand-held
vacuum cleaners provides further support for the position that
others do not need to use that color in order to compete
effectively in the marketplace.

7 Mr. Hoare references a red Eureka "Whisk" model hand-held vacuum
cleaner. Although Mr. Hoare identifies the date on which the vacuum
cleaner appears in a catalog, he never affirmatively states that the
model was ever sold. In any event, the product is not red alone but a
distinct combination of two different colors, red and white. (Id. Exh.
M).
8 Mr. Hoare testified that approximately 3 million hand-held vacuum
cleaners were sold by opposer since 1984. There is no breakdown of
that figure by color.
Opposition No. 107,081
14
Finally, we note that in evaluating competitive need "we
must consider whether alternative colors are available in order
to avoid the fettering of competition." Brunswick, supra. The
evidence in this case indicates that hand-held vacuum cleaners
are generally manufactured in a wide range of colors and
combinations of colors, further demonstrating that there is no
inherent advantage in using one particular color over another for
these products.
Accordingly, we find that applicant’s red PMS 186 is not de
jure functional for hand-held vacuum cleaners.9
B. Whether applicant has established that red
PMS 186 has acquired distinctiveness for
hand-held vacuum cleaners.
The ultimate burden of persuasion under Section 2(f) on the
issue of acquired distinctiveness is on the applicant. Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., 6 USPQ2d 1001
(Fed. Cir. 1988). Nevertheless, it is the opposer’s burden to
produce sufficient evidence or argument whereby, on the entire
record, the Board could conclude that the applicant has not met

9 We are only deciding the issue of whether a particular shade of red,
in this case PMS 186, is de jure functional for the identified
products. We make no determination in this case as to how close on the
Pantone scale another’s use of a different shade of red would have to
be for a finding of likelihood of confusion.
Opposition No. 107,081
15
its ultimate burden of showing acquired distinctiveness.10
Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49 USPQ2d
1705 (TTAB 1998).
To prove distinctiveness under Section 2(f) of the Trademark
Act, applicant may submit any "appropriate evidence tending to
show that the mark distinguishes [applicant’s] goods."11
Trademark Rule 2.41(a). Applicant, in this regard, has submitted
evidence including a consumer survey, length and exclusivity of
use, advertising expenditures, sales volume and promotional
materials.12
We find that applicant has met its burden of proof and has
produced sufficient evidence that purchasers associate the color
red PMS 186 for hand-held vacuum cleaners with applicant.

10 Contrary to applicant’s claim, the issue to be decided in this case
is not whether the Board "erred" in its decision on appeal. The prior
ex parte decision is not determinative of the outcome herein.
11 The evidence relied on to support a claim that a designation is
nonfunctional can be the same as that used to support claim of acquired
distinctiveness. Kasco Corp. v. Southern Saw Service Inc., 27 USPQ 2d
1501 (TTAB 1993).
12 Applicant also submitted the results of a "phone log," where over a
six-week period, applicant’s staff tracked references in consumer
telephone calls to the color red. The staff recorded 662 references to
red out of approximately 10,000 total phone calls. We agree with
opposer that the results of the phone log should be given no probative
weight. It is impossible to determine which Dirt Devil model, out of
the entire Dirt Devil line, generated the customer responses on which
applicant seeks to rely.
Opposition No. 107,081
16
i. Survey
As described by Mr. McCafferty, applicant conducted a "mall
intercept study" in late-May and early-June 1993 in a Chicago
shopping mall. Respondents were approached in the mall (from
walk-by traffic) and screened for either the recent purchase of a
hand-held vacuum cleaner or the intention to purchase a hand-held
vacuum cleaner within the next year. A total of 480 men and
women were recruited for the study. Mr. McCafferty states that
the purpose of the study was twofold, to determine (1) the degree
to which consumers associate a red color "with applicant’s Dirt
Devil products" and (2) if hand-held vacuum cleaners are a
separate and distinct category of product.
(a) Part 1 of the survey
Five of each of the following brands of hand-held vacuum
cleaners, for a total of 25 vacuum cleaners, were purchased from
retail stores: Dust Buster (a Black & Decker product), Dirt
Devil, Sears/Kenmore, Hoover, and Eureka. The brand names and
any other identifiable markings were removed and each of the five
brands was painted to appear in each of five colors, red, white,
blue, black and beige. An individual display consisted of the
five different prototypes with each prototype appearing in a
different color. The following illustration (taken from an
Opposition No. 107,081
17
actual photograph of record, #0393) shows the respective shapes
of the five hand-held vacuums. The following machines would have
been referred to by the interviewers as merely "Product C,"
"Product L," "Product X," "Product T," and "Product K." The
brand names have been added herein to assist the reader in
visualizing the various shapes of the different brands.
Every possible combination of brand and color was presented,
resulting in a total of 120 displays. Each respondent was shown
one of the 120 displays. Thus, each of the 120 possible displays
was seen by a total of four respondents. In addition, each color
was seen by a total of 96 respondents.
Upon viewing each colored product, respondents were asked
the following question: "Looking at product C, [products were
identified with arbitrarily assigned letters] what company do you
think makes this product, or what brand of vacuum cleaner would
you say it is?" The response was unprompted and left blank if
Opposition No. 107,081
18
unknown. Once the response was volunteered, the follow-up
question was asked, "Why do you say that?" However, Mr.
McCafferty considered the responses to that question to be
"inconclusive." (McCafferty test. p. 26). Therefore, the
responses were not incorporated in the survey report and were
later apparently destroyed.13
Mr. McCafferty concluded from responses to this part of the
study that consumers are more likely to associate the color red
with Dirt Devil vacuum cleaners than they are with other brands
or manufacturers of hand-held vacuum cleaners.
Opposer’s expert, Ms. Welter, on the other hand, was
critical of several aspects of the survey including the
"universe" of the population, claiming that as a "nonprobability"
survey, the results are not projectable to the general
population; and she was critical of Mr. McCafferty’s
interpretation of the results of the survey, concluding that
shape as well as color must have been a variable determining
respondent’s answers in the study.
As explained in McCarthy on Trademarks and Unfair
Competition, § 32:165 (4th ed. 2000) a "mall intercept" survey is

13 According to Mr. McCafferty, respondents "came back...in great
numbers saying simply because I just know it is..." or "because it is."
(Id p. 26).
Opposition No. 107,081
19
typically known as a "non-probability" survey.14 The results of
such a survey may not be generalized to the population at large
because it does not require a random selection of persons to
question. Nevertheless, shopping mall surveys have been found to
be sufficiently reliable and have been endorsed as adequate in a
number of decisions. See Miles Laboratories Inc. v. Naturally
Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) and cases
cited therein; and McCarthy on Trademarks and Unfair Competition,
supra, at § 32:165. In view of the issue involved, there is
nothing in the record to indicate that a mall intercept survey is
inappropriate.
We turn then to a consideration of the results of the
survey. For ease of reference, one of the many tables of data
produced from the survey is reproduced below.

14 Professor McCarthy further explains that a probability survey
involves the mathematically random selection of persons from the
defined universe which permits a statistical projection of the results
to the universe as a whole. The most common use of probability
sampling is in telephone surveys. Persons in each selected household
must be contacted and an appointment made for an in-person visit. (Id.
§ 32:164)
Opposition No. 107,081
20
Dirt Devil Color Test, Research Results
Exhibit 1
% NAMING DIRT DEVIL / ROYAL
COLOR
Black &
Decker
Dirt
Devil Eureka
Sears
Kenmore Hoover
Beige 0% 37% 0% 0% 1%
Red 7% 76% 31% 10% 30%
White 0% 57% 5% 0% 5%
Blue 2% 52% 1% 1% 4%
Black 1% 61% 4% 2% 3%
% NAMING DUST BUSTER / BLACK & DECKER
COLOR
Black &
Decker
Dirt
Devil Eureka
Sears
Kenmore Hoover
Beige 84% 4% 1% 8% 7%
Red 77% 2% 3% 6% 9%
White 86% 0% 4% 9% 5%
Blue 84% 2% 4% 7% 2%
Black 81% 6% 6% 10% 13%
The table shows that 76% of respondents correctly identified
the Dirt Devil hand-held vacuum cleaner when it appeared in a red
color. The correct identification of the Dirt Devil product
diminished when other colors were used, with the highest
recognition rate at 61% for black Dirt Devil product and the
lowest recognition at 37% for beige Dirt Devils.
In criticizing the survey, Ms. Welter claims that the high
recognition rate for red Dirt Devil hand-held vacuum cleaners is
due at least in part to respondents’ recognition of the shape of
the Dirt Devil. In her attempt to eliminate shape as a possible
factor, Ms. Welter subtracted the percentage of respondents which
correctly identified the black Dirt Devil (61%) from the
percentage which correctly identified the red Dirt Devil (76%).
Opposition No. 107,081
21
Thus, Ms. Welter concluded that, at best, there is only a 15%
recognition rate for color alone.
Ms. Welter also contends that the 77% recognition rate for
red Dust Buster hand-held vacuum cleaners would further "indicate
that shape is playing in." (p. 14 Welter test.); and that this
percentage of respondents associating red with the Dust Buster
product raises a question as to whether people are more likely to
associate red with Dirt Devil. It is also Ms. Welter’s
contention that the fact that the Hoover and Eureka hand-held
vacuum cleaners resemble a Dirt Devil in shape explains the high
degree of misidentification of red Hoover hand-held vacuum
cleaners (30%) and red Eureka hand-held vacuum cleaners (31%) as
Dirt Devil products and the low rate of misidentification of red
Dust Buster hand-held vacuum cleaners (7%) and red Sears/Kenmore
product hand-held vacuum cleaners (10%) as Dirt Devil products.
An examination of the results of the survey does not lead us
to a clear understanding of the extent to which shape actually
played a part in the respondents’ identifications of products.
Not having the benefit of the responses to the question which
followed the identification of each product is an aggravating
factor. At the same time, we will not just completely dismiss
the results as having no persuasive value. On the balance, we
find it reasonable to infer that the results support some degree
of association of the color red with applicant.
We note that there is a significant difference between the
size and shape of the Dust Buster and the size and shape of the
Opposition No. 107,081
22
Dirt Devil, Eureka and Hoover. It is interesting to note that
regardless of the color, the Dust Buster was correctly identified
by a high percentage of respondents (up to 86% for white). We
also note, as the Board did in the decision on appeal, that when
the Dust Buster appeared in red, it was correctly identified by
the lowest percentage or respondents. Ms. Welter has neither
rebutted nor even attempted to explain this finding.
Moreover, if the similar shape of the Hoover, Eureka and
Dirt Devil products produced responses which were based to some
degree on the shape of the product, we do not understand (and Ms.
Welter was unable to explain) why not one respondent incorrectly
identified a beige Eureka as a Dirt Devil and not more than 1%
incorrectly identified a beige Hoover as a Dirt Devil. In fact,
the recognition rate is low for all non-red Eureka and Hoover
products reaching only a high of 5% for a white Eureka. When
asked to explain this result in light of her claim that shape is
an influencing factor in the process Ms. Welter said, "I don’t
know." (Welter test. p. 46). Thus, the significance of shape as
a variable in the study has not been clearly established.
(b) Part 2 of the survey
We come to the question of whether the survey demonstrates
that hand-held vacuum cleaners constitute a separate category of
vacuum products. Ms. Welter has criticized applicant’s use of a
leading question to obtain a favorable response.
Opposition No. 107,081
23
In this part of the survey, respondents were asked, among
other questions, "If you needed to replace your hand-held vacuum
cleaner to do main [sic] job, what kind of product would you buy
to replace it?" For this question, the interviewers were
instructed to prompt the responses by reading from a list of nine
choices, varying the order from respondent to respondent. The
choices included items such upright vacuum cleaners, canister
vacuum cleaners, brooms/mops/rags and "another hand-held vacuum
cleaner." In response to this question, 83% of respondents
answered "another hand-held vacuum cleaner" and 5% answered
"upright vacuum cleaner." The remaining 12% of respondents
identified products in the other categories.
Despite Ms. Welter’s contention, we do not find the
challenged question to be leading. Because the order of the
prompt was varied for each respondent, the question did not
obviously direct the respondent to the specific answer, "another
hand-held vacuum cleaner." Moreover, the results of this part of
the survey support the other evidence introduced by applicant
which establishes that hand-held vacuum cleaners are indeed a
separate category of product, distinguished from the rest of the
line of vacuum cleaners by the size, shape, cost and purpose of
the product.
For example, applicant has submitted an excerpt from
Consumer Reports, which separates hand-held vacuum cleaners and
upright vacuum cleaners into two distinct categories; a Market
Advantage report which indicates that hand-held vacuum cleaners
Opposition No. 107,081
24
are advertised in the industry at a much lower rate than most
other types of vacuum cleaners; Mr. Farone’s testimony that
hand-held vacuum cleaners are typically less expensive than
upright vacuum cleaners, and are significantly smaller in size,
and can be sold in different aisles in stores; Trend Data report,
an independent data collection company, reporting major market
share as two distinct categories, uprights and hand-held vacuums;
and a report from Market Facts, a company conducting independent
"top-of-mind awareness studies" that separates uprights and hand-
held vacuum cleaners into two categories.
ii. Extent of Sales and Advertising Expenditures;
Length and Exclusivity of Use
Applicant has submitted evidence of over 13 years of
continuous use of its red color hand-held vacuum cleaners from
the years 1984 to 1997. For eight of those years, from 1984 to
1992, applicant sold hand-held vacuum cleaners almost exclusively
in a red color. Applicant has reported substantial sales and
advertising expenditures for that time period. The evidence
shows that applicant spent over $35 million in television
advertisements alone for red hand-held vacuum cleaners. Sales of
red hand-held vacuum cleaners during that time period approached
$400 million with nearly 12 million red hand-held vacuum cleaners
sold.
Between 1993 and 1997, applicant sold its hand-held vacuum
cleaners in a variety of colors in addition to red. However, the
Opposition No. 107,081
25
sales of hand-held vacuum cleaners in other colors does not
appear to have diminished or diluted the impact of the red hand-
held vacuum cleaners in the marketplace. The evidence shows that
sales of applicant’s red hand-held vacuum cleaners remained high
during those years and constituted a substantial percentage of
the total hand-held vacuum cleaners which were sold during that
time.15
Applicant first introduced its Dirt Devil hand-held vacuum
cleaners in a red color in 1984. Opposer has been unable to
provide clear evidence of any third-party use of red on hand-held
vacuum cleaners prior to that date. Mr. Hoare testified as to
the use of red on hand-held vacuum cleaners by third parties.
However, this testimony is speculative and not well-supported,
and the nature and extent of any such uses are unclear.
The only consequential evidence of third-party use of red on
hand-held vacuum cleaners after 1984, is opposer’s own use of red
on the Corvette hand-held vacuum cleaner. That use began in
1992, eight years after applicant’s first use of a red color on
its hand-held vacuum cleaners. Mr. Hoare testified that between
the years 1992 and 1997, opposer sold a total of 600,000 of these
products in the color red.16 We have no evidence of the nature or

15 Applicant’s precise sales figures and percentages for those years
have been made of record under seal.
16 We note Mr. Farone’s unsupported claim that others’ use of the color
red for hand-held vacuum cleaners began as a result of the "commercial
success" of applicant’s use of red. However, there is no evidence of
intentional copying of applicant’s product by any company in the record
for this case and the claim has accordingly been given no
consideration.
Opposition No. 107,081
26
geographic scope of those sales, and there is no indication that
the color of the Corvette product sold had a substantial, if any,
impact in the market or on the sales of applicant’s red hand-held
vacuum cleaners.
Thus, applicant’s use of a color red for hand-held vacuum
cleaners was first, and appears to have been otherwise
substantially exclusive over the entire period of use.17
iii. Advertisements and Promotional Materials
Applicant has advertised extensively on national television
and in nationally distributed consumer magazines and trade
journals. Opposer points out that many of those advertisements
do not specifically draw attention to the color red. The color

17 We note opposer’s contention that the surfaces of the DIRT DEVIL and
DUST DEVIL hand-held vacuum cleaners are not solely red but rather a
combination of designs, marks and colors, including red. It appears to
be opposer’s position that distinctiveness cannot be acquired in a
proposed mark which has not even been used. Applicant’s reliance on
TMEP § 1202.04(e) in response to this argument misses the point.
Nevertheless, opposer's argument is not well taken. Merely because the
color red does not cover the entire surface of the products or the fact
that other marks may appear on the goods does not mean that the color
cannot acquire distinctiveness for those goods. The color red covers a
substantial portion of the surface of the products so that the overall
commercial impression of the vacuum cleaners is essentially of a red
product. The record shows that applicant has specifically called
attention to the color itself so as to set the color apart from the
other markings on the vacuum cleaners. The ultimate question is
whether the evidence is sufficient to convince us that the color red,
whether or not applied to the entire surface of the goods, is
recognized as a mark for those goods.
Opposition No. 107,081
27
is, however, prominently featured in virtually every
advertisement and we find that this use reinforces the
association of the red color with applicant. For example, the
red devil’s tail nearly always appears as part of the overall
product display, and it is the entire focus of at least one
advertisement. (See, e.g., Farone test. Exh. 13).
Moreover, a significant number of advertisements
specifically call attention to the red color of the product. An
example of this use is shown in one of applicant’s televised
commercials. The commercial opens with an entire screen of red,
pulling back to show a red balloon with the voice-over reading
"What’s bright red, feather light and comes with an extra long
cord? Guess again, it’s the powerful DIRT DEVIL hand-vac." Mr.
Farone states that a similar print advertisement also appeared in
such nationally distributed magazines as People and Ladies’ Home
Journal.
One consumer print advertisement features a line of Dirt
Devil vacuum cleaners including the hand vacuum, and contains the
headline "When You See Dirt, See Red" followed by the text
"you’ll be amazed how good the place looks when you add a touch
of red."
Another consumer print advertisement contains the headline
"Everyone Knows Red And Green Are Complementary Colors" followed
by the text "Stock up on Dirt Devils and you’ll soon see that our
color sense makes business sense....So order up some bright red
Dirt Devil Vacuums and see how much green power red can have."
Opposition No. 107,081
28
We find that the cumulative effect of applicant’s
promotional efforts clearly demonstrate use of red PMS 186 as a
source-indicator for hand-held vacuum cleaners.18 The evidence in
its entirety establishes that red PMS 186 has acquired
distinctiveness as applicant's mark for hand-held vacuum
cleaners. We are not persuaded otherwise by the evidence that
applicant has also sold hand-held vacuum cleaners in other
colors, that some of applicant’s advertisements tout the superior
performance of the vacuum cleaners rather than the red color, or
that other advertisements promote the entire line of Dirt Devil
vacuum cleaners.
IV. Conclusion
On the basis of the record, we conclude that applicant’s red
PMS 186 color is not de jure functional for hand-held vacuum
cleaners. We are also persuaded that, in view of the totality of
the evidence submitted by applicant, and since opposer has not
sufficiently rebutted this evidence, purchasers associate
applicant’s red color PMS 186 with a single source, applicant,
for hand-held vacuum cleaners.

18 The three dealer declarations submitted by applicant have also been
considered. Suffice it to say that this evidence, while not persuasive
standing on its own, lends further support for the perception of a red
color as a mark for applicant’s hand-held vacuum cleaners.
Opposition No. 107,081
29
Decision: The opposition is dismissed.
C. E. Walters
D. E. Bucher
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal