Introducing Gold: The Latest Contender in the Battle to Trademark a Color

By: Allison McCowan *

Gold Glove Award attributed to Ken Nagano

Attributed to Ken Nakano

Any baseball fan has heard of the Gold Glove Awards. For non-baseball fans, the coveted Gold Glove Awards are given annually to nine of the best defensive players from the National League and American League respectively. Since its inception, the award has been bestowed on some of baseball’s greatest defensive players– Ken Griffey, Jr., Willie Mays, Derek Jeter, and Ozzie Smith. As well-known as the Gold Glove Awards are, some fans may not be aware that the award is associated with a company.

In 1957, Rawlings Sporting Goods Company, Inc. (“Rawlings”), a sporting goods manufacturer and distributor, created the Rawlings Gold Glove Award. Rawlings gives winners of the award a trophy of a functional gold colored glove. In 2012, Brandon Phillips, a three-time winner of the Gold Glove Award and defensive player for the Cincinnati Reds, was spotted wearing a Wilson Sporting Goods Co. (“Wilson”) baseball glove with “metallic gold-colored webbing, stitching and lettering.” Rawlings immediately filed suit for trademark infringement.

Lights at baseball stadiumAccording to its complaint, Rawlings owns the U.S. Trademark Registration for the words, GOLD GLOVE, GOLD GLOVE AWARDS, and RAWLINGS GOLD GLOVE AWARDS, as well as common law rights for the “trade dress embodied in the distinctive famous gold-colored baseball glove that forms the centerpiece of the world famous Gold Glove Award.” Rawlings alleges that the Gold Glove and the goodwill of the business are highly distinctive and “have become universally associated” with the great reputation of Rawlings, thus Wilson’s gold-colored glove destroys and dilutes their “Gold Glove” brand. Rawlings has an uphill climb and needs to prove that the gold-colored glove Brandon Phillips was given by Wilson will cause people to believe that Wilson is the sponsor of the Gold Glove Award. Rawlings is seeking to bar Wilson from ever manufacturing or distributing the glove again. Wilson has yet to file its answer to Rawlings’ complaint.

Attempts to trademark a color are not unfamiliar to the trademark world. In 1995, the U.S. Supreme Court permitted the registration of a trademark that consisted purely of color in Qualitex Co. v. Jacobson Products Co. Qualitex Co. (“Qualitex”) brought suit against Jacobson Products Co. (“Jacobson”) for manufacturing a green dry cleaning press pad similar to the color green that Qualitex had already trademarked. Although the Supreme Court allowed the registration of a trademark based on a color, it refused to enforce the trademark on other grounds. More recently, in 2011, Christian Louboutin (“Louboutin”) sued fellow French couture fashion house, Yves Saint Laurent (“YSL”), over YSL’s use of red outsoles in its Cruise 2011 collection. Louboutin, who owned the U.S. Trademark Registration for the use of red outsoles, demanded YSL stop the sale of its red outsole shoes; however, when YSL refused, Louboutin brought suit claiming trademark infringement. The battle over whether Louboutin has a “monopoly” over the color red took another turn on September 5, 2012 when the Court of Appeals held that color could serve as a trademark in the fashion industry and further remanded the case for further proceedings. Despite this recent court decision, it seems clear that the battle to trademark a color still rages on. However, now red isn’t the only color being battled out in the courts.

Early years of the Giants Baseball TeamThis case might have bigger consequences than originally imagined by Rawlings. If the court ruled in favor of Rawlings’ claim for the exclusive use of the color gold, what broad implications would it have on gold, the color most commonly associated with excellence? Would a ruling in favor of Rawlings affect the Golden Gloves for boxers, Golden Globes for the film industry or the countless other awards involving gold-colored items?

* Allison McCowan is a third-year student at Wake Forest University School of Law and is President of the Domestic Violence Advocacy Committee. She holds a Bachelor of Arts in Psychology from Norwich University. Upon graduation in May 2013, Ms. McCowan intends to practice corporate law, commercial law, or alternative entity law in either Delaware or Washington D.C.