When I mention the color “orange,” I wonder how many people think of Cedar Valley Exteriors (CVE), which repairs roofs, siding, windows, and gutters. CVE holds two service marks (which are more or less like their more familiar sibling, trademarks) for “all shades of the color orange… in any article of clothing or any form of advertisement related to any aspect of the construction industry.”
When I mention orange, how many think of Professional Exteriors, Inc. which, judging from its website, is even more enamored of the color of carrots than CVE, its competitor in the roof repair biz?
I will not venture a guess. I am a lawyer. Lawyers do not leap to conclusions; we trek to them. Ploddingly. Painstakingly. Doggedly. This is why reading legal writing is so often so riveting. Slowly, gently coaxing, good lawyers hope to guide their clients, adversaries, juries, and judges to their destination conclusions. (Bad lawyers bully, deride, dismiss, and sneer or, if all else fails, resort to bold underlined text and emphatic punctuation!)
Having said that, I will tentatively posit (and I will NOT conclude) answers to my original questions: no one associates orange with Cedar Valley Exteriors or Professional Exteriors, for that matter.
(Indeed, for certain generations from certain regions of the United States (including mine) ROOF + ORANGE = FRIED CLAMS IN A HOTDOG BUN ≠ CVE.)
But, shifting back to owning orange in the construction business, “it is what it is.” According to the United States Patent and Trademark Office (“PTO”), at least, CVE would seem to more or less own orange in the building industry. So saith the PTO. Really??? What does U.S. District Court Patrick J. Schiltz (D. Minn.) have to say?
The opinion is also noteworthy as an illustration of Judge Schiltz’s judging style: his thoughtfulness and humility. Judge Schiltz, after cross summary-judgment motions in the case were filed, argued, and after the summary judgment briefing was supplemented after argument, suggested that “the Court should appoint an attorney who is knowledgeable about trademark law to serve as a court‐appointed expert witness.” For that purpose, the court appointed Scott W. Johnston of the Merchant & Gould law firm. (As an inside: money cannot buy better advertising.)
And illustrating Judge Schiltz’s originality and independence, having appointed Mr. Johnston as the trademark expert, Judge Schiltz “respectfully disagree[d] with Mr. Johnston’s recommendation that the Court find infringement as a matter of law.”
[T]he Court finds that facts that are material under [“the SquirtCo factors” (explained below)] are genuinely in dispute. For instance, the parties have submitted conflicting evidence regarding the commercial strength of the marks and the degree to which the parties compete. Moreover, several of the SquirtCo factors appear to militate against a finding of infringement. For example, there is no evidence that Professional Exteriors intended to pass off its services as those of Cedar Valley, there is no evidence of actual confusion, and it is likely that consumers would pay close attention to the origin of the services (given that the services involve doing extensive work on consumers’ homes).
[The Squirtco Factors: (1) the strength of the owner’s mark; (2) the similarity between the owner’s mark and the alleged infringer’s mark; (3) the degree to which the products compete with each other; (4) the alleged infringer’s intent to “pass off” its goods as those of the trademark owner; (5) incidents of actual confusion; and (6) the type of product, its costs and conditions of purchase. SquirtCo v. Seven‐Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)).]
On a final note, Judge Schiltz suggests, “it is likely that consumers would pay close attention to the origin of the services (given that the services involve doing extensive work on consumers’ homes)” but, anecdotally, when someone comes to consumers’ homes after a hail-storm has passed through and suggests new siding and a new roof, with a one-year warranty, at no cost within seven days (assuming the consumer’s home is insured), I get the sense that many home-owners pay less attention than Judge Schiltz might believe to the origin of the services (and pay NO attention to the presence or absence of the color orange, incidentally).