Success in the American tradition demands the qualities of motivation, determination, willingness to sacrifice, hard work, timing, and a true element of luck.

That’s how gunpowder manufacturer and recent trademark applicant Hodgdon Powder Company prefaces its company history. Certainly several of these factors came into play in the company’s success at the Trademark Trial and Appeal Board (TTAB).

In a rare and precedential color mark decision, the Board reversed a refusal to register Hodgdon’s mark comprising the color white applied to gunpowder for "preformed gunpowder charges for muzzleloading firearms," finding that Hodgdon had successfully proven that its mark had acquired distinctiveness.

The examining attorney argued that the applied-for mark was not inherently distinctive and that Hodgdon's evidence of acquired distinctiveness was insufficient. Given the precedents in Wal-Mart Stores, Inc. v. Samara Bros. and in Qualitex Co. v. Jacobson Prods. Co., which held that marks comprised of a single color alone are never inherently distinctive, her first argument was clearly correct.

In its opinion in In re Hodgdon Powder Co., Inc., Serial No. 85947962 (June 30, 2016), however, the Board noted that gunpowder was almost always referred to as black powder. Hodgdon's witness backed this up by testifying that gunpowder has “always been gray or black.”

Determined and motivated, Hodgdon went on to explain that the white color of its gunpowder serves no purpose other than to identify its product, that the color white is not a natural by-product of the gunpowder manufacturing process, that there has been no other known use in the industry of the color white for gunpowder since the product was first developed by Chinese alchemists in the ninth century, and that the color white is not functional when used in connection with gunpowder.

This evidence led the Board to conclude that the color white is an anomaly contrary to consumers' expectations regarding the appearance of gunpowder.

To further support its application, Hodgdon filed a declaration attesting to substantially exclusive and continuous use of the color white for gunpowder for at least the five years preceding the filing date of its application. Hodgdon also put in some hard work at the winningly named 2014 SHOT Show in Las Vegas (SHOT stands for Shooting, Hunting, Outdoor Trade). It conducted an informal survey about its product and presented the results to the Board. The survey showed that over 90% of respondents stated that only one company makes white gunpowder. And that company is Hodgdon.

Hodgdon’s advertising stated that its product, sold under the registered mark White Hots, is "The Only White Gunpowder." The company reported that since first introducing the mark in 2008, its sales had exceeded $3.5 million. The examining attorney contended that Hodgdon's advertising was insufficient as "look for" evidence and did not establish that consumers viewed the proposed color mark as a source indicator for the identified goods. She also asserted that Hodgdon provided insufficient information about its survey methodology and participants, making the survey inadmissible.

The Board, however, found Hodgdon's advertising to be "effective 'look for' advertising." As to the survey, the Board acknowledged that it would not be admissible in an inter partes proceeding, and standing alone would not establish acquired distinctiveness. However, the validity of the survey was immaterial in light of the Board's finding regarding the "look for" advertising.

Reviewing the totality of the evidence, the Board found that the color white for Hodgdon's gunpowder had acquired distinctiveness, and so reversed the refusal to register.

And here’s where Hodgdon’s “true element of luck” comes in: You can probably count on one hand the number of single color cases that the TTAB has allowed to register in the last five years. The Board and the courts in general do not appear to be sympathetic to owners of single color trademarks, and require a substantial amount of evidence to find that single color marks have acquired distinctiveness.

This case is instructive to future would-be single-color trademark owners trying to prove acquired distinctiveness. I would not go so far as to say it signals a new trend that single-color marks are going to be allowed to register more often. But in this case, the fact that no other gunpowder manufacturers make white gunpowder probably outweighed any lack of enthusiasm the Board might have for single-color applicants.

So Hodgdon had its shot—and hit the target on the second try. An American success story, indeed.

Reprinted with permission from the October 18, 2017 edition of Inside Counsel© 2017 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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