Well perhaps not any more. Here’s a bizarre bit of machinery drama that I ran across….
Good guys can still wear white.
Welsh & Katz, Ltd. clients, Grizzly Industrial, Inc. and Woodstock International, Inc., successfully countered WMH Tool Group’s alleged product seizure tactics when U.S. District Court Judge John W. Darrah ordered that WMH consent to the immediate release of Grizzly and Woodstock’s woodworking and metal working machines seized and detained by the U.S. Customs and Border Protection (CBP).
Grizzly, Woodstock and WMH are manufacturers of woodworking and metal working machines and equipment. Chicago-based WMH Tool Group is the U.S. subsidiary of Swiss conglomerate Walter Meier Holding AG.
The detention was part of an ongoing federal trademark dispute between the three companies. WMH’s federal trademark registration claims exclusive rights in the color white for rectangular bases for metal and woodworking machines and equipment. Based on its registered trademark, WMH urged CBP to seize and detain Woodstock’s off-white and Grizzly’s green and tan machines, according to Joseph F. Schmidt of Welsh & Katz, who served as lead counsel for Grizzly and Woodstock.
Judge Darrah raised the possibility that WMH’s trademark registration may be in jeopardy. In his ruling, Judge Darrah found that Grizzly and Woodstock, “… have sufficiently demonstrated a likelihood of success on the merits of its claim that [WMH’s] [Trademark] Registration is subject to cancellation for fraud on the PTO in the procurement of the registration.”
Schmidt, along with Michele S. Katz, also of Welsh & Katz, contested the basis for WMH’s seizure tactics. “Overly aggressive would be putting it mildly,” Schmidt explains. “WMH convinced CBP to seize our clients’ off-white — and even their green and tan — machines directly from our clients’ exhibits during a major trade show in Las Vegas, based on a U.S. trademark registration that is likely to be found invalid.”
The same day that the machines were seized at the Las Vegas trade show, Grizzly and Woodstock applied for emergency relief in federal court in Chicago, and the District Court issued an order temporarily restraining WMH and CBP from seizing Woodstock’s and Grizzly’s machines at the trade show. However, according to Schmidt, WMH persisted in its efforts, and in October 2007 CBP began detaining Grizzly and Woodstock machinery at U.S. ports of entry. Woodstock and Grizzly filed a motion for a preliminary injunction seeking an order requiring WMH to consent to the release of Woodstock’s and Grizzly’s products which have been detained or which, in the future are seized or detained by CBP during the pendency of this case.
The dispute started in July 2007, when WMH filed suit against Woodstock and Grizzly alleging trademark infringement and a host of other charges. Grizzly and Woodstock claimed that WMH Tool Group could never have acquired trademark rights in the color white because of prior third-party uses of white/off-white colors on woodworking and metal working machines. Moreover, Grizzly and Woodstock claimed that WMH’s TM Reg is invalid and subject to cancellation for fraud on the U.S. Patent and Trademark Office (USPTO) in the procurement of the registration.
According to the evidence, WMH claimed first use of the color white in 1996, but at the hearing in federal court in Chicago on January 17, 2008, WMH’s own witnesses admitted that WMH did not use white on woodworking machines until 1998; that WMH did not use white on at least two machines that it alleged use on, contrary to USPTO rules; and that WMH failed to disclose competitors’ prior uses of white as required by the USPTO. Mr. Schmidt suggested that these missteps may cost WMH its trademark registration. The case is WMH Tool Group, Inc., v. Woodstock International, Inc. and Grizzly Industrial, Inc., No. 07-C-03885 (N.D. ILL 2008). Judge Darrah’s order was entered February 21, 2008.
http://www.welshkatz.com/?t=40&an=357format=xml&p=822
David B
Edited 3/6/2009 1:04 am ET by davidbrum
Replies
Even in a down economy, lawyers are still working hard! If any of those companies listed in your post has a layoff, will they admit that workers suffered because they frittered money away over legal actions related to....paint?
Ever notice that red is still an available color? Probably because the Primary Colors Holding Company, LLC keeps its value well above the market rate. Good lawyers.
Hey, when "they" were negotiating corporate color schemes, how bad were Woodtek's lawyers to have agreed to that awful mallard green with yellow mustard? Were they the winners over, say, Hammer?
Cheers,
Seth (whose entire master bedroom and bathroom is apple green. His wife has a better lawyer.)
I somehow don't think that red woodworking machines would make it past the marketing dept anyway. Negative connotation there. The same goes for painting flames on the motors.
Thank goodness no one owns the color green (I guess). Nearly all the companies would go out of business suing each other. Powermatic would be safe. I don't think anybody else wants their color ( I think it's cool).David B
Black and Decker and Skil and Milwaukee and Freud use red.Chris @ http://www.flairwoodwork.spaces.live.com(soon to be http://www.flairwoodworks.com)
- Success is not the key to happiness. Happiness is the key to success. If you love what you are doing, you will be successful. - Albert Schweitzer
That's true, completely. But they're not stationary tools, which would be a different market, so red's still viable. Otherwise, Grizzly, General and Hitachi would be in a pitched battle over green, Makita and Delta would wrangle over blue, and Saw Stop and Festool can grapple over black. Powermatic and DeWalt can deem if gold and yellow are non competitive.Some Laguna tools are white, which makes them liable, as is Delta when they make a "limited edition" platinum tool. And if it were completely illegal to switch colors, Powermatic would be forced to return to their green roots. Objected to by Grizzly and General, for sure.Do Honda and Toyota sue each other over paint colors? How about Trek and Specialized bicycles? Did your neighbor down the street sue you for copying his light blue house with dark blue trim? I'm typing this on a black Logitech keyboard; Microsoft also sells a black keyboard... Will Coors drag Budweiser to court for selling the same color beer?My son doesn't wear blue or red shirts to junior high, because those are "gang" colors, but in elementary school, those colors were fine.That's the stupidity of the color wars.
You cite an example in which wearing a certain color invites gang attack, and has the potential to be, therefore, literally a matter of life and death, all in the defense of a claim that colors are frivolous?The mind boggles...To help the discussion along: individual colors are distinct from symbols. Symbols are sometimes referred to as "Colors", (note the capital) as in the case of the National Colors, (the flag) or gang colors.Before denigrating one's choice of Colors, be they the National Colors, JET White, or the symbol Coca-Cola uses, it's wise to consider that symbols matter, and denigrating the defense of Colors is in the same class as denigrating one's choice of religion.It's rude.It's never wise to blindly attack another's symbols. They may shoot back, and they may be willing to die at the base of their flagpole.
There's no choice, then. The United States of America should immediately sue every other nation that uses red, white and blue in their flag. Australia, New Zealand, France, England, The Netherlands, etc. will just have to scratch for something else, because there's no clear way to distinguish a Yank from an Aussie just by looking at their flags' colors (lower case 'c').Certainly the above paragraph - which satirizes the antics of a company proclaiming they factually own the color white - is one more example of anecdotal evidence that color alone does not distinguish one corporation from another. In my reply to Steve, Ford and GM both use blue in their logo (I suspect they are distinct Pantone (r) colors registered as part of their corporate logo, but I'm too lazy to find out for sure. So I'll say blue.)The notion of gangs owning colors is as ridiculous as a corporation's claims of ownership, but as you point out, gangs may have a reaction to a color that goes beyond civil banter. I live in some nice suburbs, but there are gangs, and the kids avoid gang colors. Who to sue, and what's the remedy?I've contacted my congressman, and asked him to make a bill outlawing flagpoles. Eliminating flagpoles should stop frivolous shooting deaths; no pole to die at, therefore, no death.Cheers,Seth
Edited 3/7/2009 5:40 pm ET by Hamelech
For those of you ridiculing the idea that a color can be part of a trade dress that companies invest money in let me just ask you to put yourself in a business' shoes for a moment. Good will and brand recognition are are huge parts of success in the consumer goods market. You do what you can to make your reputation for good products and attach that association with your logo, your name, and yes, your color. Is Delta's yellow distinctive? How about Powermatic's gold? Even Porter Cable's Gray and Makita's blue and on and on. Now, we'd like to think that consumers are smart enough to distinguish differences in products, but the fact is that if one product looks alot like another, there is a tendency to think they are similar in quality and such. This is why businesses lobbied for and our government granted businesses the right to trademark and protect trade dress including dominant colors. So, you are Jet and have invested a lot of money in advertising your new line of White tools not to mention the costs associated with simply designing, manufacturing , and distributing high quality tools.Along comes a budget tool maker with lower quality stuff, but aggressive pricing. They decide they want to copy some of your trade dress. In effect, they are trying to free ride on some of the good will you've developed in the buying public toward tools that look like yours. Would you stand for it? Not if meant real money to you either by hurting the association with white tools because they offer CRAP (for example) or by taking customers who you would have otherwise won because there tool looks alot like yours.Now, we don't know what the facts of this particular case were. Maybe Jet was stretching it, just to beat up and harass a competitor, we don't know. But, then again, perhaps the other producer was indeed trying to free ride or otherwise encroach on a valid intellectual property right. Again, we don't know. But there is nothing ridiculous about the idea of having such a right or protecting it, as a general matter.
Samson,Jammersix spoke of trade dress, too. I'm not too stubborn to learn."Under the functionality doctrine, trade dress must also be nonfunctional in order to be legally protected; otherwise it is the subject matter of patent law. What is functional depends strongly on the particular product. To be nonfunctional, it cannot affect a product's cost, quality, or a manufacturer's ability to effectively compete in a nonreputational way. For example, color is functional in regard to clothing because that product is purchased substantially because of its color and appearance, but color is not functional on household insulation, which is purchased purely to be installed in a wall and is never seen."Shop Fox looks white in color to me. So does Jet.View the attached photos of both a Delta and Steel City table saw, and compare the color. Does Delta have a beef with Steel City under the terms of trade dress, because the color is similar?Or, (as I've opined in previous posts because an opinion is all I have on this matter) if you register a specific color formula, there is no beef, because you have legally differentiated your color, regardless of similarity to another color?If the fight is over white because of trade dress arguments, perhaps it's a small matter for a manufacturer to register a color that's white looking but legally not white. If you lined up Shop Fox and Jet side by side at Woodcraft (which is just like shopping for a car on auto row), color might be come a functionable definition, just like clothing, and therefore not protected.Cheers,Seth
No, because the grey Steel City choose is a basic neutral grey, long used as a color for machinery. Google for machinery grey paint, and you will find a host of makers and references. It was a very safe color. In fact, it is quite similar to the paint on my older (1946) Delta Unisaw. But at some point, likely as patent expiration became an issue and other trademarks were needed Delta, shifted to it's current fairly distinctive blue grey color--Delta gray. When machinery was sold only to factories or tradesmen, then color mattered little, and grey was used a lot. The Unisaw was initially unique because of it's patents. Other makers of small saws used different designs--Powermatic was left tilt and heavier. Then, when the basic patents expired other makers, copied the machines with the expired patents and began production in Asia. Some did so line for line, others barely bothered with the lines and seem to have used the parts as patterns for the castings.
Interestingly enough, all those direct knockoffs of table saws are set to disappear as a change in UL listing requirements mandates riving knives, and with them the necessity for changes in the designs. Comparisons will be about more than about fit and finish and the accesssory package, but also how well thought out and functional the new designs prove to be. Could be interesting in the table saw market when all models are considerably less than 14 or 20 years old.
Besides, my Jet tablesaw is blue. :)
Law school takes three years and four of college before that. Even then, good lawyers need experience before they really know their field. Intellectual property laws have existed and been evolving since before the birth of our Nation. Their legislative and judicial history's are long and complex. They cannot be casually understood in a sound bite.
Furthermore, the facts and allegations in this matter are essentially unknown to us. We have not seen the complaints, the briefs, or any of the evidence at all.
We are essentially talking in a vacuum about nothing here.
This is a waste of time.
Steve,I like your answer, I think it's going down the right path. Do you have any source, e.g. web link, that further speaks to these types of coming changes, such as mandates by UL for safety features that you indicated? Easily found on UL's website?Samson, I civilly disagree, this is not a waste of time, because we're seeing a glimpse of corporate bull elephants smacking into each other; ultimately, their actions will be reflected in the show room and the product catalogs. You never know for Knots if there lurks an ardent woodworker who is also an expert trade mark attorney - that's an upside to posting to a discussion community. Jammersix,Glad you said Jet was blue, I couldn't remember their previous color. Along the way, the Jet leopards have too changed their spots. Whether by trade dress rules or unwritten gentleman's agreement, I surely don't know.Cheers to all,Seth
To All,For what it's worth for others to kick around the formula of:The print/process color resulting from 100% Magenta combined with 100% Yellow is not protected under trade dress......
but it protected under patent.That's the formula for Coca-Cola Red and guess who owns the patent.Talk amongst yourselves... :)Boiler
If it's so "ridiculous", why doesn't your child wear red or blue?Answer: because a symbol that is "ridiculous" to you isn't so to the gang in question.Another group that disagrees with your claim that Colors are frivolous is the United States Marines. Some of them are fairly stubborn on the issue, and others are downright closed minded.Not like Knotheads.Another idea is that "ridiculous" is an opinion, not a fact, and as I've pointed out, when expressing one's opinion about a symbol, one does well to be wise about it.Expressing an opinion about the National Colors, a Cross, a wedding ring, a Star of David, or a cop's badge can be done well, or it can be done like an idiot.One who doesn't recognize the value of symbols would be leading an empty, vacant life.
Why on earth do you think they would have to?
J-6,There's no law requiring a corporation to tearfully confess transgressions to the buying public. However, I'm only stating the obvious that money squandering will be blamed generically on something else, perhaps current global economics.I used to work for a SF Bay Area biopharma company. They were loaded with money. Poor, poor, poor spending decisions due to lack of management accountability caused them to break up the company and sell the valuable pieces. The global economic malaise had no bearing at all for the resulting layoffs.E.g., based only on the presumption of FDA approval for the flagship drug, the company spent an oil sheik's income moving the corporate headquarters to new digs - to be successful, you gotta look successful. Funny thing is, the FDA denied approval, something along the lines of, oh, the drug did not demonstrate efficacy compared to the goals of the clinical trial. Poof.Bad news would send any company reeling, but imagine if my former company's executives hadn't literally spent large millions of dollars on the flashy headquarters BEFORE the FDA ruled; they would have had the financial means to take another shot at approval, instead of reducing from 1000+ employees to less than 200.How does my rant relate to lawsuits over paint color? We'll never know the cost per machine to support frivolous legal actions , but no doubt L'affaire de la Peinture affects the Average Joe employee when costs have to be cut. Cheers,Seth
Why is is necessarily true that suits over paint color are frivolous. Developing a trademark appearance (trade dress) can be important in promoting a product. Making it recognizable, by color, or by "swoosh" or etc. makes advertising the product easier. Unlike copyrights, trademarks must be defended to be maintained, so it may be necessary to take some actions. Look at OTIS who lost "Elevator" because of lack of defense, and Coke¯ who is likely to at least send a letter if you use the lower case form of the word when you mean a cola beverage.
I don't know is the trademark in this particular case is valid, but neither does anyone until it works it's way through the courts. I'd guess that Jet is seeing Grizzly as a competitor of increasing importance, as the perceived quality differences diminish.
Steve,Ford's oval is blue, but GM's square logo is also blue. Either color isn't an important separator of corporate identity or GM currently doesn't have the cash to launch a lawsuit. I say both.On a different note, companies are well known to register not only their logo but special Pantone colors that make them up. Look real carefully at Safeway's logo, the S in brackets. It's two different colors of red. Oops, Lucky uses red, too. So did Fry's, when they were in the grocery business.Cheers,Seth
Fry's is still in the grocery business - at least in Queen Creek, AZ (where my daughter livers).
Bob
Cool. I remember waaay back (in the 80's) when visiting the Sunnyvale, CA store, it was half conventional grocery, half computer store. In building more stores, they dropped the grocery part.The Campbell store's theme is Egyptian; the building's facade and interior decor related to pharaohs and such. The Palo Alto store is western ranch. For a while, Fry's was pretty whimsical.I guess Fry's lost steam with the themes - The Sunnyvale and Frmeont stores are completely computer/appliance super stores, and food is pre-packaged snack items.Cheers,Seth
All the stores in Southern California are computer / appliances only as well. But the ones in Arizona are either grocery only, or computer / appliance. Don't know why.
Bob
Seth, I think that the color winner has to be the green tractor working out in the field. John Deer has that one locked up. Paddy
Yep, I'm with you on that. Green Deere's feed us all.Know what other green I like? Girl Scout vests at the supermarket, because that means it's cookie time! It's difficult to say 'no' to Thin Mints; they got me for two boxes.Did I just fall into the trap that color is a significant factor in product recognition? It was completely intentional, by the way.
I agree that trademarks must be defended. The thread says Jet owns white. But not so. They own that shade of white. There are a seemingly infinite mix of variations. Kodak didn't own yellow, they owned Kodak Yellow and Kodak Red. If someone used slightly different shades of red and yellow, an argument could still be made against them if it appeared they were trying to confuse the buying public - IE mostly yellow boxes with a red logo.
However, if they used those same slightly different colors in a way that people were not confused, it may not be a legal offense.
If Grizzly wants white, let them choose a different hue - a cold white as opposed to a warm white. (I thought Grizzly owned a green hue as part of their trademark).Greg
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Well there are some very learned posts here! I like the drug company story.But let's get real here. How can any corporation own a color ? Just like copyrighting the "No Name" brand. This is just a large ill of the corporate/legal mind set. Is this applicable to imported material only? If it was made in the great USA can they paint it any color? If you went to a paint recycle and mixed colors to make a prototype, could that be a corporate infringement? Only if it was detected and deemed worth the cost of litigation. Would recycling paint be a viable defense?If I take a picture with my camera, do I have to pay royalties to these "Owned Chroma Rights"?. Me things not.These so called legal right to thing such as color are just a rouse to part people with cash and make cash for people who do not contribute to the economy just legal parasites, who feed off others ideas.I do believe in one's own persons intellectual property rights. Do not have a big attitude about the "Swoosh Thing" but colors abound in nature, they are all around use, If you look over this planet there has to be at least on of these colors made in nature, therefore not patentable.
That is as stupid as giving genetic rights to a native plant, but the first one in gets the patent on something that has been around since before patent law. again unpatentable but the courts and lawyer just over rule nature.You are also assuming that everyone has a equally high point of color perception. Can not remember the exact stats but many men are color blind so what does it matter? Does law include, equality of perception, literacy, mental state, education, age, application? If you have dementia is the government protecting you best interests by regulating the color of a power tool. Do the people who sell adult diapers fight over color of disposables?I think we should look at what matters, if all this effort was put into something real, we could have a better world. As any unemployed person what color check they would like?
I'm not impressed.There's companies that will bury you if you infringe on their trademarks-- JET equipment is one of them.Manufacture table saws, market them in JET white, then.The rest is arm waving.
Interesting article. You make noise when you are concerned about the competition. I have a lot of Grizzly stuff and the quality is fine. I could give a big rats arse about what the color of the stuff is. Besides today, most of the stuff is made in the same factory with a different color job, or maybe not anymore. HEE HEE!
If it moves, tax it. If it keeps moving, regulate it.
And if it stops moving, subsidize it.
I'm with you Bones. I think it's ironic that these two companies are having a spat about who originally came up with a color scheme, since both companies have founded their businesses on "borrowing" existing designs from other companies(with some refinements). I don't mean to demean either company. I have a shop full of Jet and
Shop Fox machines and I think they're great. I actually like them even better for being white, and they are actually a pretty close match, although I don't think you'd confuse them.David B
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