Court mows down garden machinery summary judgment claim

In Deere & Company v MTD Holdings Inc (2004 WL 324890), the US District Court for the Southern District of New York has denied Deere's motion for summary judgment in its trademark infringement proceedings against the defendant's use of the colours green and yellow on garden machinery.

Deere has used the colours green and yellow for years in connection with most of its products, which range from garden mowers to agricultural tractors. It owns three US federal trademark registrations that include claims of the colours green and yellow. Deere sued MTD Holdings for trademark infringement and unfair competition pursuant to the Lanham Act and state statutes as a result of MTD's use of the colours green and yellow on lawn tractors, mowers and snow throwers.

The US District Court for the Southern District of New York denied Deere's motion for summary judgment. The court first noted that Deere could only protect its specific uses of the colours green and yellow as applied to its products against confusingly similar uses and not to those colours generally.

With respect to the trademark infringement claim, the court concluded that Deere had established the required level of acquired distinctiveness based upon its longstanding use, advertising and sales figures, media coverage and a consumer survey. The court considered Deere's green and yellow colour scheme to be a strong mark for lawn and garden equipment. It also found that MTD's goods were related. However, the court concluded that fact issues remained as to whether MTD's trade dress was similar overall to Deere's. Deere's evidence of actual confusion coming exclusively from anecdotal testimony and statements from Deere employees and other sales representatives did not sway the court at this point in the proceedings.

Further, MTD overcame Deere's allegations of bad faith by explaining that its choice of colours had been driven, among other things, by the fact that "green does not show grass stains and yellow seats do not get hot in the sun". The court determined that the cost and quality of the products, purchasing conditions and sophistication of the relevant consumers also weighed in MTD's favour. Given the number of open factual issues, the court concluded that summary judgment on the merits of the trademark infringement claims was inappropriate.

The court, however, ruled that MTD's laches defence barred Deere's claims with respect to many of MTD's products. MTD had switched from an "orange-ish red with cream or beige" colour scheme to a green and yellow scheme in 1992. Deere had sued MTD for trademark infringement in 1994 based on a comparative advertisement for the same product line, but had not raised any objection to MTD's use of green and yellow at that time. The court found that granting Deere relief at this point would prejudice MTD. It also concluded that the trade dress of most of MTD's products had been the same since their introduction and had not morphed over time to become more like Deere's.

The court held that the laches defence did not bar Deere's claims with respect to MTD's relatively newer products, which have a different green and yellow colour scheme from MTD's other products.

Ron N Dreben and Travis Boozer, Morgan Lewis & Bockius LLP, Washington DC

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