A Wisconsin district court has determined the red knobs on the workhorse Wolf Stove have acquired secondary meaning.
Plaintiff Wolf Appliance, Inc. (“Wolf”), famous for its professional and home cooking ranges, filed suit against competitor Viking Range Corp. allegiing federal trademark infringement for Vikings recent use of red knobs for its range handles, and asking the court to grant a preliminary injunction, requiring Viking to cease use of the red knobs.
In finding that the color red on the Wolf knobs had acquired secondary meaning, the court gave little weight to declaration from dealers and customers and instead based its opinion on the following facts:
LONG-TERM CONTINUOUS USE: Wolf has been selling ranges with red knobs since 1933.
LOOK-FOR ADVERTISING: Wolf has been calling attention to its red knobs in advertising for years. For instance, in a recent catalog, Wolf states, “Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature.”
RECOGNITION BY THIRD PARTIES OF THE KNOB: The court found that major news articles all seemed to reference the “red knobs” a integral to easily identifying a Wolf Range over other high-end cooking products.
FEDERAL TRADEMARK REGISTRATION: The PTO granted a trademark registration for the color mark in 2008. Notwithstanding the evidence submitted at trial that the red knobs had been in use since 1933, the registration claims a first use date of at least as early as 2000.
SIGNIFICANT SALES OF THE “RED KNOB” STOVE: Since 2000 alone (the claimed first use date), Wolf has sold more than $800 million in stoves and spent more than $41 million in advertising and promotions, many of which include “look for” advertising.
Practice Note: This case serves as a beautifully written primer on what a client has to show to establish secondary meaning in a color or other trade dress. It also shows that while a trademark registration does establish prima facia distinctiveness, many judges will not rely solely on its validity, and will give a defendant wide latitude to overcome the presumptions established with a federal registration. Clients who want to use trade dress to distinguish themselves in the marketplace should be advised to put in place a marketing and sales plan that supports the goal.
The author would like to draw attention to the great restraint she exercised in refraining from making fairy tale jokes. Red? Wolf? Slow pitch down the middle.