Newborn Brothers and Co., Inc.v.Dripless, Inc.

Trademark Trial and Appeal Board

Aug 16, 2002

No. 91113471 (T.T.A.B. Aug. 16, 2002)

Mailed: August 16, 2002

Hearing: Paper No. 36
June 25, 2002 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Newborn Brothers and Company, Inc.
v.
Dripless, Inc.
_____

Opposition No. 113,471
to application Serial No. 75/095,681
filed on April 29, 1996
_____

Royal W. Craig and Deborah J. Westervelt of the Law
Offices of Royal W. Craig for Newborn Brothers and
Company, Inc.

Richard L. Stroup and Andrea Anderson of Finnegan,
Henderson, Farabow, Garrett & Dunner, L.L.P. for
Dripless, Inc.
______

Before Hohein, Chapman, and Drost, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Applicant, Dripless, Inc., seeks to register on the
Principal Register under Section 2(f) of the Trademark
Act the mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 113471
2

for “caulking guns.” The application includes the
following statements: “The mark consists of the color
yellow as applied to the major surfaces of the goods.
The dotted outline of the goods is intended to show the
position of the mark and is not part of the mark. The
drawing is lined for the color yellow.” The application
was filed on April 29, 1996, based on applicant’s claimed
date of first use and first use in foreign commerce
between Taiwan and the United States of December 1989.
Applicant ultimately submitted evidence sufficient to
persuade the Examining Attorney that the color yellow had
acquired distinctiveness and identified applicant as the
source of caulking guns.
Following publication of the mark, registration was
opposed by Newborn Brothers and Company, Inc. As grounds
for opposition, opposer alleges that it manufactures and
distributes caulking guns; that since prior to
applicant’s use of the color yellow on caulking guns,
opposer and other manufacturers of caulking guns have
manufactured and distributed caulking guns in a variety
Opposition No. 113471
3
of single-tone, primary colors, including yellow; that
the use of single-tone primary colors (including yellow)
on caulking guns is functional and incapable of
functioning as a trademark because there is a significant
competitive need to maintain a variety of primary colors
to enhance the visual attractiveness of merchandiser
displays and to increase sales, and for purposes of model
separation; that conferring exclusive rights to the color
yellow for caulking guns upon applicant will deprive
opposer and other caulking gun manufacturers of the
functional benefits associated with the use of yellow for
caulking guns; and that the primary color yellow has not
acquired distinctiveness for applicant’s goods.
In its answer, applicant admits that opposer is a
distributor of the identical goods, namely, caulking
guns, but otherwise denies the salient allegations of the
notice of opposition. Applicant raises as its
affirmative defenses the allegations that opposer will
not be damaged by registration of applicant’s mark; that
opposer lacks standing; that opposer’s initiation and
pursuit of this opposition is a material breach of a
settlement agreement between the parties from a lawsuit
in U.S. District Court in California; that this
opposition is barred by estoppel and acquiescence; and
Opposition No. 113471
4
that under the doctrines of res judicata, collateral
estoppel and principles of equity, opposer is precluded
from pursuing the opposition.
Applicant, in support of its affirmative defenses,
pled as the underlying facts thereof that on August 25,
1997 applicant filed a civil suit for trade dress
infringement, Lanham Act violations, unfair competition
and patent infringement against opposer in the United
States District Court for the Northern District of
California (Case No. C-97-3118TEH) wherein applicant (as
plaintiff) alleged, inter alia, that opposer’s sale and
distribution of yellow drip-free caulking guns infringed
applicant’s trade dress rights; that on September 23,
1997 opposer (as defendant) filed an answer and
counterclaims asserting, inter alia, that applicant had
failed to acquire any valid or enforceable rights in the
color yellow; that the U.S. District Court denied
opposer’s motion for partial summary judgment, finding,
inter alia, that applicant had established that its trade
dress was not, as a matter of law, unprotectable, and it
may have acquired distinctiveness; that following the
Court’s decision on partial summary judgment, the parties
resolved their differences through a “Settlement
Agreement and Stipulation For Dismissal With Prejudice
Opposition No. 113471
5
And Order Thereon” (applicant’s affirmative defenses,
paragraph 13); that under the Settlement Agreement the
parties “mutually released each other from any and all
causes of action, whether for damages or equitable
relief, arising out of the subject matter of the
litigation” (applicant’s affirmative defenses, paragraph
14); that the parties filed the Stipulation for Dismissal
With Prejudice with the Court, which, in turn, dismissed
the case in its entirety with prejudice; and that the
initiation of this opposition by opposer constitutes a
material breach of the Settlement Agreement.
The record consists of the pleadings; the file of
the opposed application; the testimony, with exhibits, of
Peter Chang, opposer’s founder and president; the
testimony, with exhibits, of Dan Rumrill, applicant’s
president and CEO; opposer’s notice of reliance on the
Pantone color formula guide, and applicant’s supplemental
answer to opposer’s interrogatory No. 7; and applicant’s
notices of reliance on (i) the discovery testimony, with
exhibits, of Frederick Mertes, opposer’s controller and
operations manager, and (ii) opposer’s supplemental
answer to applicant’s interrogatory No. 13.
The entire deposition of Peter Chang, and portions
of the depositions of Dan Rumrill and Frederick Mertes
Opposition No. 113471
6
were filed as confidential. However, both parties
discussed much of the evidence of record in their briefs
on the case, thereby waiving the confidentiality thereof.
Nonetheless, the Board will exercise discretion in
relating certain business matters.
Both parties filed briefs on the case, and both
parties were represented at the oral hearing held before
this Board.
Evidentiary Matters
Before considering the merits of this case, we will
decide the parties’ respective objections to various
matters offered into evidence.1 In its brief on the case,
applicant reiterated the following objections to portions
of opposer’s record:
(1) applicant’s brief, pp. 25 and 29,
regarding Peter Chang dep., p. 35,
the witness’ answer referring to a
market survey is inadmissible because
(i) applicant requested such
information in discovery (see e.g.,
applicant’s interrogatory No. 16) and
opposer stated “no such documents
exist,” and (ii) opposer introduced
no supporting documentation regarding
this survey;

1 Opposer did not renew any previous objections to testimony nor
make any objections to any evidence in its main brief on the
case. Thus, opposer has waived its right to object to evidence.
However, for the sake of clarity of the record, we will explain
the admissibility of the items objected to by opposer for the
first time in its reply brief.
Opposition No. 113471
7
(2) applicant’s brief, pp. 25 and 31,
regarding Peter Chang dep., p. 9, the
witness’ answer referencing
Hechinger’s request for caulking guns
in the color blue is inadmissible
because applicant requested such
information in discovery (see e.g.,
applicant’s interrogatory Nos. 5 and
6, and document request Nos. 7 and 9)
yet opposer provided no information
about this purported interchange with
Hechinger’s; and

(3) applicant’s brief, pp. 26 and 31,
regarding Peter Chang dep., pp. 44-47
and 86-89, that the color yellow for
caulking guns is critical to the
brand images of DeWalt, Inc. and The
Stanley Works, Inc. is inadmissible
because (i) applicant requested such
information in discovery (see e.g.,
applicant’s interrogatory No. 10, and
document request Nos. 12 and 17) and
opposer provided no information
regarding such interchanges with
DeWalt and/or Stanley Works, and (ii)
Mr. Chang’s “correction” to his
testimony shows that Stanley Works
does not require the color yellow on
caulking guns.

Opposer in its reply brief (pp. 6-7 under the
heading “3. No Legitimate Evidence of Actual Confusion”)
objects to (i) applicant’s brief-p. 17, referring to
statements filed during the ex parte prosecution of
applicant’s application regarding consumer recognition of
the color yellow as applicant’s trademark for caulking
guns because they were not introduced during trial; (ii)
the affidavit [sic-declaration] of Dan Rumrill submitted
during the ex parte prosecution of applicant’s
Opposition No. 113471
8
application because it cannot be evidence of the truth of
the statements contained therein and must be introduced
as evidence during trial under Trademark Rule
2.122(b)(2); and (iii) the testimony of Dan Rumrill
(dep., pp. 58-62) regarding actual confusion because it
is hearsay.
These objections to evidence will be decided
seriatim.
Applicant’s objection to the testimony of Mr. Chang
regarding opposer’s market survey is sustained for the
two reasons enunciated by applicant, specifically, (i)
opposer answered discovery relating to surveys with “no
such documents exist” and did not provide the survey
during discovery, and (ii) opposer introduced no
supporting documentation regarding this survey.
Applicant’s objection to the testimony of Mr. Chang
regarding opposer’s interchange with the Hechinger
Company is sustained because opposer failed to produce
any information on this matter during discovery in
response to applicant’s discovery requests which would
reasonably include such information.
Applicant’s objection to the testimony of Mr. Chang
regarding opposer’s interchanges with DeWalt, Inc. and
The Stanley Works, Inc. is sustained because opposer
Opposition No. 113471
9
failed to produce any information on this matter during
discovery in response to applicant’s discovery requests
which would reasonably include such information.2
Opposer’s objections to evidence submitted by
applicant during the prosecution of its application are
overruled. Specifically, the declaration of Dan Rumrill
is properly of record on applicant’s behalf inasmuch as
it was introduced into evidence during applicant’s
testimony period as Exhibit 1 to the testimony of Mr.
Rumrill.
Finally, opposer’s objection to the testimony of Mr.
Rumrill relating to instances of actual confusion is
overruled. If it is otherwise reliable, employee
testimony on the subject of instances of actual confusion
received at the company can be admissible. See Armco,
Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155, 217 USPQ
145, 149 footnote 10 (5th Cir. 1982) (testimony of
plaintiff’s employees about purchasers attempting to

2 Even if this testimony regarding DeWalt and Stanley Works had
been considered, the testimony as to Stanley Works was recanted
by the witness. Specifically, Mr. Chang stated the following on
page 8 of the “Errata Sheet” attached to his deposition
transcript under the heading “Correction”: “Where I stated
that, (paraphrased) ‘one of the Stanley Work’s licensing
requirements for the Newborn X-tender model would be for it to
be painted in yellow to conform to the Stanley’s corporate
color’, is not correct. Stanley Works does not require the
color yellow under their licensing agreement....” The testimony
Opposition No. 113471
10
reach defendant admissible because it was not used “to
prove the truth of the matter asserted” (Fed. R. Evid.
801(c)) or under the state of mind exception (Fed. R.
Evid. 803(3)); and CCBN.com Inc. v. c-call.com Inc., 53
USPQ2d 1132, 1137 (D. Mass. 1999) (“statements of
customer confusion in the trademark context fall under
the ‘state of mind exception’ to the hearsay rule. See
Fed. R. Evid. 803(3)”). Because applicant’s employee’s
testimony is not so vague as to be inadmissible, we
overrule opposer’s hearsay objection. However, the
probative value of this testimony is lessened by its lack
of specifics.
The Parties
Newborn Brothers and Company, Inc. (opposer) and
Dripless, Inc. (applicant) are two of the limited number
of major producers of caulking guns for the United States
market. The other major producers are Great American
Marketing Company, Z-Pro International, Inc., Albion
Engineering Company, and Cox North America, Inc. The
Home Depot and Lowe’s Home Centers who distribute
imported caulking guns, are also major competitors in
this industry. These goods are relatively inexpensive
ranging in price from $3 to $20 apiece. The entire

regarding DeWalt involved the possible manufacture by opposer of
Opposition No. 113471
11
caulking gun industry in the United States is small,
generating about $30 million annually; and opposer has
about a 30% share of the market, while applicant has
about a 5% share of this market. Given the size of the
market and the nature of the product, most of these
caulking gun producers focus their marketing efforts
primarily on the retail store-level buyers and
professional, trade industry purchasers. Opposer does no
direct-to-consumer advertising.
Opposer was founded in 1974 by Peter Chang,
president and sole owner, to distribute the caulking guns
manufactured by a factory in Korea which he owned and
managed in the 1970s. Opposer invented the smooth rod
concept for caulking guns to improve on the ratchet
caulking gun, and today opposer sells over 40 different
models of caulking guns, including manual, pneumatic and
cordless battery power.
An individual, Mr. Danny Finnegan, developed the
dripless mechanism for a caulking gun, obtaining a patent
thereon in July 1984;3 and in 1992 his son Danny (having
inherited the patent) assigned it to his brother Gary,

a multi-component cordless power epoxy gun. (Chang dep., p. 83).
3 The dripless or drip-free caulking gun stops the flow of caulk
immediately upon release of the trigger, unlike ordinary
caulking guns on which the user must either press a thumb
Opposition No. 113471
12
who had begun in 1989 to commercialize the patented
technology, painting the caulking guns in the color
yellow. Dripless, Inc. was incorporated in 1992 and Gary
Finnegan assigned his patent and trademark rights, as
well as his inventory of yellow caulking guns, to
Dripless, Inc.
Applicant sells paint sundries primarily to the
painting market, with the majority of its business being
caulking guns. Applicant’s major retail outlets are
professional paint stores such as Sherwin Williams, Duron
Paints and Wallcoverings, and Kelly Moore Paints, and it
also sells through chain stores such as True Value,
Sevistar and Lowe’s Home Centers.
The Parties’ Federal Litigation in California
In August 1997 applicant, Dripless, Inc., (through
different counsel than that representing applicant in
this opposition proceeding) filed in U.S. District Court
for the Northern District of California (Case No. C 97-
3118 TEH) a lawsuit against opposer, Newborn Brothers,
Inc., for trade dress infringement, patent infringement,
unfair competition and other claims. Newborn Brothers
(as defendant therein) (represented by the same counsel
as herein) filed an answer with counterclaims for

release (on smooth rod caulking guns) or push back the ratchet
Opposition No. 113471
13
declaratory relief and interference with advantageous
business relations. Later, defendant filed a motion for
summary judgment, alleging, inter alia, that the color
yellow was functional and non-distinctive. In an order
dated June 30, 1998, the District Court denied the motion
for summary judgment stating (p. 12) that “plaintiff has
established that its claimed trade dress is not, as a
matter of law, unprotectable, that the trade dress may
have acquired secondary meaning, and may be likely to be
confused with defendant’s product.” Following the denial
of the summary judgment motion, the parties negotiated a
“Settlement Agreement and Mutual General Release,” and
executed a “Stipulation for Dismissal With Prejudice” of
the lawsuit. The District Court ordered the dismissal
with prejudice on October 15, 1998.
Our primary reviewing court, the Court of Appeals
for the Federal Circuit, has discussed the place that
breach of contract assertions may play in Board
proceedings. Essentially, claims for enforcement or
breach of contract would generally be appropriate in
court, but, the Board may consider an agreement, its
construction, or its validity if it is necessary to
decide the issues properly before the Board. See Selva &

rod and pull it back (on ratchet caulking guns).
Opposition No. 113471
14
Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217
USPQ 641, 647 (Fed. Cir. 1983). That is, while it is
outside the Board’s jurisdiction to enforce a contract
between the parties, agreements to cease use are
routinely upheld. See Vaughn Russell Candy Co. v.
Cookies in Bloom Inc., 47 USPQ2d 1635, 1638 (TTAB 1998).
The settlement agreement itself provides that the
terms are to remain confidential (except for a few
matters, including what applicant may disclose to
infringers or alleged infringers), and it was submitted
in this Board proceeding as confidential. Therefore, the
Board will not quote therefrom. However, suffice it to
say that opposer
contends that the settlement agreement relates only to
its agreement not to sell non-drip caulking guns in
certain Pantone shades of yellow (specifically 77 listed
shades);4 that, therefore, opposer remains free to use any
remaining Pantone shades of yellow on non-drip caulking
guns, as well as to use all shades of yellow on ordinary
caulking guns; and that applicant’s present application
is overbroad because it is not limited to non-drip
caulking guns and certain shades of yellow.

4 See particularly, paragraph 1 of the settlement agreement and
exhibit 1 thereto.
Opposition No. 113471
15
Applicant, on the other hand, contends that the
settlement agreement involved opposer’s agreement to
refrain from using any of the 77 Pantone shades of yellow
on any caulking guns;5 that there was no limitation on
applicant’s right to use yellow on caulking guns; and
that thus, no such limitations are required in
applicant’s involved application for the color yellow for
“caulking guns.”
There are obvious inconsistencies in the agreement,
which we need not resolve here. Although opposer
contends it is entitled to use other Pantone shades of
yellow, it points to not even a single remaining specific
shade of yellow that opposer would be allowed to use.
There is nothing in paragraph 1 (or elsewhere) of the
settlement agreement that indicates opposer retained any
rights. In fact, opposer was specifically allowed to use
up any inventory of yellow caulking guns in its
possession as of the effective date of the agreement.
The involved application was filed by applicant on April
29, 1996, and opposer answered and otherwise defended the
California lawsuit as of September 1997, signing the
settlement agreement in October 1998. Clearly, opposer
knew or should have known of applicant’s pending

5 See particularly, paragraph 9 of the settlement agreement.
Opposition No. 113471
16
application; but, opposer apparently made a strategic
decision not to require any reference at all to
applicant’s pending application in the settlement
agreement, much less any limitations to applicant’s
claimed goods and/or shades of color in its pending
application.
We agree with applicant that the settlement
agreement is a limitation on opposer’s use, not
applicant’s use.6
However, inasmuch as the involved application is not
mentioned in the settlement agreement, we also find that
the prior litigation between the parties does not create
an estoppel or res judicata effect on opposer’s right to
oppose the application.
The Burden of Proof
Opposer bears the burden of proving its claim that
applicant’s mark is functional by a preponderance of the
evidence. See Brunswick Corp. V. British Seagull Ltd.,
35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994), cert.
denied, 115 S.Ct. 1426 (1995); and Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d
1001 (Fed. Cir. 1988).

6 Opposer’s argument that applicant has engaged in bad faith by
applying to register the color yellow without restriction as to
Opposition No. 113471
17
Applicant carries the burden of proving its asserted
claim of acquired distinctiveness. “‘The burden of
proving secondary meaning is on the party asserting it,
whether he is the plaintiff in an infringement action or
the applicant
for federal trademark registration.’ 1 Gilson, Trademark
Protection and Practice, §2.09, at 2-72 (1987),” quoted
in Yamaha v. Hoshino, supra at 1006. See also, 2 J.
Thomas

shades of yellow, and for all caulking guns without restriction
as to drip-free, is not supported by the evidence.
Opposition No. 113471
18
McCarthy, McCarthy on Trademarks and Unfair Competition,
§15:66 (4th ed. 2001). In an opposition proceeding the
issue of distinctiveness of an applicant’s mark must be
determined on the evidence as it exists at the time of
trial. See Harsco Corp. v. Electrical Sciences, Inc., 9
USPQ2d 1570, 1571 (TTAB 1988). See also, 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§15:71 (4th ed. 2001).
Standing
In an order dated March 26, 2001, the Board entered
summary judgment in opposer’s favor on the issue of
opposer’s standing. Moreover, the record establishes
that opposer and applicant are competitors in the field
of selling caulking guns, thereby clearly establishing
opposer’s standing to bring this case.
Functionality
Opposer contends that the color yellow applied to
caulking guns “is functional, both in the aesthetic and
utilitarian sense.” (Brief, p. 27.) In this case opposer
contends that the color yellow on caulking guns is
functional because of the competitive need of other
caulking gun manufacturers to make the goods in any
color, including yellow. Specifically, opposer contends
that customers may request caulking guns in yellow; that
Opposition No. 113471
19
yellow shows up better than other colors for purposes of
the visibility on the store shelves; and that colors are
used to indicate different models.
A product feature is functional and cannot serve as
a trademark if it is essential to the use or purpose of
the article or if it affects the cost or quality of the
article. See TrafFix Devices Inc. v. Marketing Displays
Inc., 532 U.S. 23, 58 USPQ2d 1001, 1006-1007 (2001);
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34
USPQ2d 1161, 1163-1164 (1995); and Inwood Laboratories,
Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 USPQ
1, footnote 10 (1982). With regard to color, the Supreme
Court stated in Qualitex v. Jacobson, supra, at 1164:
Although sometimes color plays an
important role (unrelated to source
identification) in making a product
more desirable, sometimes it does not.
And, this latter fact--the fact that
sometimes color is not essential to a
product’s use or purpose and does not
affect cost or quality--indicates that
the doctrine of “functionality” does
not create an absolute bar to the use
of color as a trademark. See Owens-
Corning, 774 F.2d, at 1123, (pink color
of insulation in wall “performs no
trademark function”).

That is, there is no question that color may be the
subject of a trademark. But, if the color is functional,
it is not registrable as a trademark.
Opposition No. 113471
20
Functionality is a question of fact, and depends on
the totality of the evidence. See In re Morton-Norwich
Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).
Functionality standards are equally applicable when
determining whether a color for which registration is
sought is functional. See Qualitex v. Jacobson, supra;
and Brunswick Corp. v. British Seagull, supra.
Factors which may be considered in determining
utilitarian functionality include: (i) the existence of a
utility patent showing the functional advantage of the
design; (ii) advertising materials showing that the
utilitarian advantages have been touted by applicant;
(iii) facts tending to show an absence of alternative
designs; and (iv) facts from which it could be determined
that the design is the result of a comparatively simple
or inexpensive method of manufacture. See In re Morton-
Norwich, supra, 213 USPQ at 15-16. As the Court of
Appeals for the Federal Circuit recently stated in Valu
Engineering Inc. v. Rexnord Corp., 278 F.3d 1268, 61
USPQ2d 1422, 1427 (Fed. Cir. 2002), the TrafFix, supra,
decision did not alter the Morton-Norwich analysis.
While opposer contends that the color yellow on caulking
guns involves utilitarian functionality, there is simply
no convincing evidence thereof in this record.
Opposition No. 113471
21
There is no patent of record relating to applicant’s
use of the color yellow on caulking guns. Applicant’s
advertisements and flyers do not tout the color yellow as
having any utilitarian or functional advantage in the
operation or performance of caulking guns. Applicant’s
advertisements, instead, tout the “patented dripless
feature” eliminating the caulk run on.
There is virtually no evidence that a particular
color is required on caulking guns. Opposer’s witness,
Mr. Chang, testified that it is necessary to be able to
utilize all colors for caulking guns for model
differentiation, and because of customer requests for
different colors. He also testified as to the aesthetic
marketing value of yellow because it is a bright, visible
color. Opposer does offer different model caulking guns
in different colors (see e.g., a catalog used by opposer
prior to the 1997 lawsuit filed by applicant (Chang dep.,
exhibit 77), showing opposer’s promotional smooth rod and

7 It is difficult for the Board to assess the exhibits to Peter
Chang’s deposition because they were submitted as photocopies in
black and white. In fact, when opposer’s attorney first made
reference to the exhibits, he stated the following (p. 10):

Let’s get an exhibit in. Andrea, for
your purposes, I made copies of these
things. When I thought color was
important I made color copies but some
of them are black and white. If you
Opposition No. 113471
22
ratchet caulking guns painted in green; standard smooth
rod and ratchet caulking guns were in yellow or gray;
professional and “do-it-yourselfers” were painted in
blue, yellow, orange, red, or black; industrial caulking
guns were plated in zinc chromate; epoxy guns were black;
and air guns were black and white). However, opposer has
not established any utilitarian reason why different
colors are used for different models, or why yellow in
particular is necessary for any model.
Peter Chang also testified that a third party (Cox
North America, Inc.8) offers caulking guns in a range of
colors, including yellow (Chang dep., exhibit 119). He
also specifically testified that he had not actually seen
any yellow caulking guns manufactured by Cox sold at the
consumer level. (Dep., p. 92.) The Board cannot assess
the colors shown on this exhibit as it is a black and
white photocopy. Also, there is no specific evidence
concerning any use by Cox North America of a yellow

would rather have a color copy of these
things after the questions, let me know.

However, most of the exhibits to the Chang deposition were also
submitted as exhibits to the depositions submitted by applicant,
and these exhibits were color copies.
8 According to Mr. Chang, Cox is the largest caulking gun
manufacturer in Europe. See dep., p. 92.
9 Exhibit 11 (Chang deposition) is in the record only in black
and white. When applicant’s attorney objected to this exhibit,
Opposition No. 113471
23
caulking gun in the United States. There is however,
testimony to the contrary in that applicant’s witness,
Mr. Rumrill, clearly testified that applicant is aware of
no other uses of the color yellow on caulking guns in the
United States; and specifically, including no knowledge
of Cox North America offering a yellow caulking gun in
the United States. (Rumrill dep., p.

opposer’s attorney stated “we can get the original, I suppose.”
(Dep., pp. 58-59.)
Opposition No. 113471
24
70.) We are not convinced on this evidence that this
third party (Cox North America) is using the color yellow
on caulking guns offered for sale in the United States.
Opposer has failed to prove that producers of
caulking guns have a competitive need to use the color
yellow to differentiate models of caulking guns. There
is certainly no convincing evidence that color(s) must be
used on caulking guns to identify and differentiate
between models or uses of caulking guns (for example,
there is no evidence that red may be used as an emergency
or safety color), or that even if color is generally
used, that it must involve yellow.
Opposer also contends that customers sometimes
request or demand a particular color, and opposer and
others must be free to provide any color requested.
However, three of the instances testified to by opposer
regarding such
possible situations have been excluded from the record as
explained above. However, even if we considered these
incidents--Hechinger’s once requested blue caulking guns,
and DeWalt Inc. and Stanley Works requested yellow
caulking guns--, the record shows that the Hechinger
request occurred about thirty years ago, and both the
DeWalt and/or Stanley situations involved negotiations,
Opposition No. 113471
25
but never resulted in an order, and that Stanley Works
did not
require yellow on the caulking guns.) Mr. Chang
testified as to another customer (“McLambert-Duncan,” a
manufacturer of caulk) who requested their corporate
yellow on plastic caulking guns to use in their
promotional package, but Mr. Chang advised them that
plastic caulking guns are not painted and could not be
provided in an exact shade of yellow. (Dep., p. 44.)
Opposer’s controller and operations manager, Mr. Mertes,
testified that he believed there might have been one
“half-hearted interest or attempt” by a customer
requiring yellow on caulking guns, but he believed the
customer “ended up buying a different color.” (Dep., p.
63.) Further, he testified that he was not aware of any
instance in which a potential customer of opposer refused
to purchase caulking guns because opposer did not produce
the color the customer wanted. (Dep., p. 38.)
In fact, the record shows that other colors are
available and are used on caulking guns. Opposer’s
brochure from 2000 shows the progression of opposer’s
caulking guns from 1974 through 2000 (Chang dep., exhibit
Opposition No. 113471
26
1; and Mertes dep., exhibit 1810), including caulking
guns offered in the colors blue, gray, red, black, and
orange. But there is no evidence why the color yellow is
specifically necessary for opposer or others to use on
caulking guns.
Opposer uses several different colors on its
caulking guns, but it used yellow on caulking guns
essentially only in 1996-1997, terminating such use
following the lawsuit filed by applicant. While we are
aware that opposer argues that it intends to resume use
of yellow after this opposition, Mr. Mertes testified
that he was not aware of any need for opposer to market
any caulking guns in the color yellow. (Dep., p. 69.)
Opposer contends that it used yellow on caulking guns in
1993. However, opposer’s own record shows that this
“use” consisted of a “Rainbow of Colors” for caulking
guns for a display at the August 1993
National Hardware Show in Chicago (Mertes dep., exhibit
23). This display included a display box with several
different colored caulking guns, specifically, green,
yellow, blue, red and orange. This display was used by
opposer once at that trade show and has not been used
since the 1993 trade show. Mr. Chang explained with

10 The exhibit to the Mertes deposition was a color copy of this
Opposition No. 113471
27
regard to this “rainbow of colors” display that
“practically, when we tried to go out in commercial
purposes, because we have three different warehouses all
over the country, keeping
the inventory in different colors was so expensive that
the idea dropped after the show”; and “it was just too
costly maintaining four or five different colors of the
one model in three different locations. Now when we go
into one centralized warehousing, this will make
economics very advantageous.” (Dep., pp. 35-36.) Mr.
Mertes is not aware of any instance of opposer selling a
yellow caulking gun to a customer. (Dep., p. 42.)
Finally, painting caulking guns yellow is not a
comparatively simple or cheap method of manufacture for
those goods. To the contrary, the record is clear that
the color yellow is particularly more expensive and
complicated to produce. Dan Rumrill, applicant’s
president and CEO, testified that it would be less
expensive to use other colors, explaining that “We have
had all kinds of problems with the color yellow. It’s a
difficult color to work with. Coverage in terms of
getting uniformity of color is difficult. And our
manufacturer seemed to have trouble getting the exact

brochure.
Opposition No. 113471
28
same color for us each and every batch. So there have
been some problems, and there were certainly some
additional costs associated with that.” (Dep., pp. 12-
13.) Even opposer’s controller and operations manager,
Mr. Mertes, testified that “yellow is a very difficult
color to paint. It’s very difficult to cover....”
(Dep., p. 62.)
According to opposer, red and yellow are the
brightest colors and are the most visible, making these
the most marketable aesthetically. (Chang dep., pp. 36-
37.) With regard to this contention that there is a need
to use yellow because its visibility increases the
marketing value or the aesthetics of caulking guns, it is
simply not established on this record. Even if red and
yellow are bright colors, this fact, standing alone, does
not establish that the color yellow must be available to
all caulking gun producers as a color for the involved
goods in order for opposer (and others) to remain
competitive. Further, there is no evidence that
consumers (wholesalers or ultimate consumers)
specifically prefer these bright colors for caulking guns
because of their brightness making them more marketable.
The fact that a product is more visible on a shelf does
not make the few bright colors per se unregistrable for
Opposition No. 113471
29
virtually any and all products. (See In re Owens-Corning
Fiberglas Corporation, 774 F.2d 1116, 227 USPQ 417 (Fed.
Cir. 1985)(pink for insulation). See also, Qualitex v.
Jacobson, supra.
The traditional color depletion theory does not
apply to prevent registration of applicant’s mark in this
case. As stated in Qualitex, supra, the color depletion
theory is unpersuasive because “it relies on an
occasional problem to justify a blanket prohibition.
When a color serves as a mark, normally alternative
colors will likely be available for similar use by
others.” Qualitex, 34 USPQ2d at 1165. Opposer urges
that it must be able to use the color yellow on caulking
guns, for marketability, for customers requesting certain
colors (i.e., corporate colors), and for model
differentiation. However, despite all these alleged
competitive needs, opposer agreed as a result of
litigation not to use yellow in 77 different shades. As
we stated earlier herein, opposer has not pointed out a
single specific shade of yellow it would be permitted to
use following the litigation. Thus, opposer’s reliance
on the color depletion theory and aesthetic functionality
is undercut by opposer’s own actions in agreeing not to
use 77 shades of yellow. Moreover, opposer has been in
Opposition No. 113471
30
the caulking gun business longer than applicant, but
apparently did not see a need to produce caulking guns in
the color yellow prior to applicant’s use of yellow on
caulking guns.
The record before us does not establish that
registration of the color yellow for applicant’s caulking
guns is prohibited based on competitive need. See
Brunswick Corp. v. British Seagull, supra. The color
yellow on caulking guns has not been proven to serve a
functional purpose that must be available to all caulking
gun producers in order for companies in this industry to
effectively compete. In this case there is simply not a
preponderance of evidence that yellow is a better way to
color caulking guns; in fact, it is more difficult and
expensive to do so. Opposer makes caulking guns in other
colors and, at least vis-a-vis applicant, may presumably
continue to do so. Nor has it been proven that
competitors need to use yellow to more easily identify
their products in order to effectively compete.
Registration to applicant under these circumstances does
not deprive competitors of any reasonable right or
competitive need. Opposer did not prove that competitors
need this color (or perhaps all primary colors) to
effectively compete in this industry. Cf., Kasco Corp.
Opposition No. 113471
31
v. Southern Saw Service, Inc., 27 USPQ2d 1501 (TTAB
1993).
We find on this record, therefore, that the applied-
for mark is not functional, either utilitarian or
aesthetic.
Acquired Distinctiveness
Applicant has acknowledged that its mark is not
inherently distinctive. (“Pursuant to the Examiner’s
Amendment issued October 30, 1998, [applicant’s]
application was amended to seek registration under
Section 2(f). Therefore, the issue of inherent
distinctiveness of the color yellow for caulking guns is
not germane to this opposition.” Applicant’s brief,
footnote 11.)
The declaration of Dan Rumrill regarding applicant’s
claim of acquired distinctiveness, which was submitted
during the course of the ex parte prosecution of
applicant’s application, was also entered into the record
as exhibit 1 to his testimony in this inter partes case.
In the declaration, Mr. Rumrill, then applicant’s vice
president, averred that the color yellow was used to
indicate the source of applicant’s predecessor’s (Gary
Finnegan) caulking guns, and when applicant acquired the
rights it decided to continue selling the yellow caulking
Opposition No. 113471
32
gun; that applicant and its predecessor have marketed
yellow colored caulking guns since 1989; that the yellow
color is incongruous with the natural dark color of steel
that many caulking guns are made of; that painting the
caulking guns yellow increases production costs because a
heavier coat of paint is required to cover the dark
steel; that applicant has been the substantially
exclusive user of the color yellow on caulking guns; that
the exceptions to applicant’s exclusive use were
“infringements” (one by opposer resulting in applicant’s
federal lawsuit against opposer in California, and the
other by a company called Great American Marketing, which
company also stopped using yellow on caulking guns
following applicant’s demand therefor); that applicant
offers about ten models and on all of its models the
majority of the surface of the caulking gun is painted
yellow; that applicant has sold several hundred thousand
of its goods in the last year (1996); that sales have
grown from several thousand dollars in 1990 to almost $1
million dollars in 1996; that applicant and its single
color yellow on caulking guns are well known in the
industry with thousands of dealers and consumers exposed
to applicant’s advertising and promotional materials
emphasizing the color yellow as indicating source of the
Opposition No. 113471
33
caulking guns in applicant; that in advertising applicant
refers to its caulking guns as “the yellow gun”; that
applicant exhibits at trade shows promoting the color
yellow as referring to applicant; and that as one of the
few major marketers of caulking guns, applicant sells its
goods in major paint store chains such as Sherwin
Williams (over 2000 locations), ICI Paints (over 900
locations) and Kelly Moore Paints (over 150 locations),
as well as to distributors who sell to retailers and
major chain stores such as True Value, Servistar and
Lowe’s.
Attached to Mr. Rumrill’s declaration were, inter
alia, an article from “This Old House Magazine” featuring
applicant’s yellow-colored, drip-free caulking gun;
letters from dealers and contractors referencing
recognition of the yellow caulking gun as produced by
applicant; some of applicant’s advertisements featuring
the color yellow; and photographs of applicant’s booth at
a trade show featuring yellow color.
With specific reference to the letters from
consumers, we note that these are individually written,
and are not form statements. Also, one is from a
contractor, one is from an independent distributor and
the remainder are from retailers, most of whom not only
Opposition No. 113471
34
refer to their own personal recognition of yellow as
indicating applicant’s caulking guns, but also refer to
their customers as associating the color yellow with
applicant as the source thereof.
At trial, Mr. Rumrill, now applicant’s president and
CEO, testified as to further favorable media attention
including being mentioned in “The Dallas Morning News,”
March 1996, and “The Family Handyman,” January 1997. In
addition, he specifically testified that both retailers
(applicant’s customers) and the ultimate consumers
recognize and associate yellow caulking guns as emanating
from a single source, that being applicant as the source
thereof. There are of record copies of several
advertisements and promotional materials touting the
color of applicant’s yellow caulking guns, e.g., “Grab
the ‘yellow gun’ and get the job done!,” Paint &
Decorating Retailer, January 1999; and “If it’s not
yellow it’s not Dripless,” Paint Pro, September 2000. It
is clear that applicant’s letterhead stationery, it’s
website (created in 1999), its advertisements and its
point-of-sale materials all expressly reference yellow
either by having pictures and/or words appear in the
color yellow and/or by using one of applicant’s phrases
about yellow. Applicant has engaged in extensive “image”
Opposition No. 113471
35
advertising and promotion stressing the color yellow in a
trademark sense. This is particularly significant
evidence of acquired distinctiveness. See In re Owens-
Corning, supra; In re Ennco Display Systems Inc., 56
USPQ2d 1279, 1285 (TTAB 2000); and In re Denticator
International, 38 USPQ2d 1218, 1219 (TTAB 1995).
Applicant’s advertising expenditures have increased
substantially from its beginnings to about $250,000
annually; and applicant’s sales of its caulking guns have
reached almost $2 million annually. Applicant also uses
the color yellow and its logo on various promotional
items, such as shirts, caps, and pens.
It is clear from the record that applicant achieved
relatively quick success in the marketplace with its
drip-free caulking gun, marketed in the color yellow. In
fact, opposer obtained some of applicant’s yellow colored
caulking guns, and in 1995/1996 forwarded at least one to
some of opposer’s overseas suppliers to provide them a
sample of what was in the marketplace. Opposer’s use of
yellow on caulking guns resulted in applicant receiving
between six and twelve complaints from retailers and the
ultimate consumers, involving a caulking gun not working
properly (but it was opposer’s caulking gun); applicant’s
sales representatives had to deal with applicant’s point-
Opposition No. 113471
36
of-sale bins filled with opposer’s yellow-colored
caulking guns; and Mr. Rumrill had a family member tell
him he bought one of applicant’s yellow caulking guns,
when, in reality, it was opposer’s yellow-colored
caulking gun. These situations resulted in applicant’s
bringing the federal lawsuit against opposer in 1997.
In addition to opposer and Great American (discussed
above), applicant has also stopped a third company, Z-Pro
(who agreed to discontinue their plans to introduce a
yellow caulking gun, prior to their use of yellow on
caulking guns even reaching the market). As explained
previously, Mr. Rumrill clearly testified that applicant
is not aware of any entity other than applicant using the
color yellow on caulking guns in the United States.
It is true that applicant has on very limited
occasions made and sold caulking guns in a color other
than yellow (some in red and even fewer in silver). (See
Rumrill October 1997 declaration, paragraph 9; and
opposer’s notice of reliance on applicant’s supplemental
response to opposer’s interrogatory No. 7.) However, it
is clear that these situations involved the specific
request for low-end models, the non-yellow caulking guns
were provided in very limited numbers (red - about 600,
silver – about 50), did not include applicant’s drip-free
Opposition No. 113471
37
technology, and no sales literature was created for the
red and only one piece for the silver. These other uses
of color by applicant are an insignificant fractional
percentage of the caulking guns sold by applicant.
Thus, we are satisfied that applicant’s use of the
color yellow as described and as used on the specific
goods identified in applicant’s application has been
substantially exclusive and continuous; and that the
color yellow on those goods has acquired distinctiveness
in that it is recognized as identifying and
distinguishing the source of the goods.
In sum, applicant has established by a preponderance
of the evidence, considered in its entirety, that it has
had substantially exclusive and continuous use of the
color yellow for use on caulking guns since around 1990;
that the amount of non-yellow caulking guns produced by
applicant is but a fractional percentage; that applicant
has expended substantial sums on advertising and
promoting the color yellow for its caulking guns since
around 1990; that it has achieved large and growing sales
both in terms of dollars and number of units; and that
purchasers recognize the color yellow for caulking guns
as identifying applicant as the source of the goods. See
Opposition No. 113471
38
Section 2(f) of the Trademark Act; and Yamaha v. Hoshino,
supra.
Decision: The opposition is dismissed, and the
application will proceed to issuance under Section 2(f)
of the Trademark Act.