“Once the generic is always generic”. This principle has been endorsed by the almost every across the country, including district court in this circuit, as well as the most authoritative treatise on trademarks.  The ninth circuit itself has seemed to adopt this rule. The upshot of the principle is that of a mark has at any time been deemed a generic term, it may never thereafter become a protectable trademark, barring the most rare and extreme circumstances. At a minimum the burden would fall squarely on the trademark claimant to prove a unique expectation to the general rule.

No correlation with Red Gold Terminology

A Los Angeles jeweler urged the Ninth Circuit at a hearing to revive his suit accusing LVMH Moet Hennessy Louis Vuitton SE of infringing his registered trademark for “Red Gold,” arguing the term is not generic because the watches at issue are “neither red nor gold.”

During oral arguments in Pasadena, California, George Akwo of GA Law Group APC, representing jeweler Chris Aire, urged a three-judge panel to revive his client’s suit against LVMH subsidiary and luxury watchmaker Hublot of America, arguing that U.S. District Judge Dolly M. Gee got it wrong when she ruled that “red gold” is a generic term that can’t be trademarked.

Akwo argued that Gee mistakenly evaluated the trademark as a potential generic term, which can never be trademarked, when in fact it is actually a descriptive or suggestive term that doesn’t simply describe what a product is, and can be trademarked if it acquires a secondary meaning associating the term with a specific product, as Aire’s “Red Gold” line of watches containing a gold and copper alloy does.
“You have straps, you have the watch face, you have the timepiece, there is no watch on this earth that has a part called red gold, or a part called.

Case information

Case Title

Solid 21, Inc. v. Hublot of America, et al

Case Number

15-56036

Court

Appellate – 9th Circuit

Nature of Suit

3840 Trademark

Date Filed

July 6, 2015

Law Firms

Kashfian & Kashfian

Companies

LVMH Group

Swatch Group

Court judgment

Circuit Judge Richard Paez however, asked what distinguished “red gold” from several other colors of gold that are clearly not trademark-eligible.
“When I first saw this case and I began to read the briefs and look at the district court’s order, and I saw what it was about, red gold, what struck me is it seemed no different from yellow gold, or white gold, which are generic,” he said.
Akwo responded that unlike yellow gold, which is gold’s natural color and is pure gold, or white gold, which describes gold alloys that are actually white, “red gold” more abstractly refers to Aire’s products.
“It’s undisputed that red gold is neither red nor gold, so the consuming public has to make a mental leap, Your Honor, to associate what is called ‘red gold’ with the product,” he said.
Aire and his Solid 21 Inc., which registered the Red Gold brand as a federal trademark for jewelry and watches made of tinted gold in 2003, sued Hublot and 14 other watchmakers such as Breitling USA Inc., Rolex SA and the Swatch Group Ltd. in September 2010.
LVMH moved for summary judgment, arguing that “red gold” had been used for years by countless jewelers to describe a gold and copper mix that produced a red-tinted look.

Initially, Aire scored a win, as Judge Gee in September 2014 denied the summary judgment motion, ruling that “red gold” isn’t in some major dictionaries, and that Aire’s expert’s testimony, although contested by Hublot, could stand.

In June 2015, however, Judge Gee reversed course ruling that “red gold” is merely a generic term for red-tinted gold alloy that is widely used in the jewelry industry, and she dismissed the suit.

Shapiro added that even if those declarations had been considered, it wouldn’t have been enough to overcome the 900 pages of evidence that Hublot had submitted showing the use of “red gold” as a generic term in jewelry-making going back to the 1940s. Shapiro added that all the evidence shows that “red gold” is merely a generic product feature. The panel took the matter under submission.
Circuit Judges Harry Pregerson, Richard Paez and Morgan Christen sat on the panel for the Ninth Circuit. Aire is represented by George Elonge Akwo of GA Law Group APC.
Hublot is represented by Stephen Youngerman and David A. Robinson of Youngerman & McNutt LLP, and Robert E. Shapiro, Wendi E. Sloane, Shermin Kruse and Hannah Y. Jurowicz of Barack Ferrazzano Kirschbaum & Nagelberg LLP. The case is Solid 21 Inc. v. Hublot of America et al., case number 15-56036, in the U.S. Court of Appeals for the Ninth Circuit.

The Court order

This case comprises a claim by plaintiff that the defendant’s use of the term “red gold” infringed its alleged trademark rights. Defendant field a motion for summary judgments on January 3, 2014 and hearing was held on April 25, 2014. At issue was defendant assertion that the term “red gold” was generic and therefore not entitled to trademark protection. On September 29, 2014, the court denied the motion. It acknowledged that “Defendants… presented over helming evidence of genericness prior to the registration of solid 21’ Trademark. Accordingly, the court noted that summary judgment in defendants favor would have been ordered ‘if the relevant period was prior to registration of solid 21’s 2003 trademark.

The striking element of the court’s decision is that, after finding the term generic in 2003. It still believed the term could have become a protectable trademark thereafter. This constituted an implicit rejection of the “once generic, always generic” principle.