Unique Sports Products, Inc. (“Unique”) manufactures and markets the TOURNA GRIP, an overgrip product for tennis rackets that wraps around preexisting racket handles to provide additional cushioning and moisture absorption during play. Unique and its predecessors have sold the TOURNA GRIP product in a light blue color since 1977. Unique owns a federal registration for this light blue color for “grip tape for sports rackets.” In 1999, when Unique applied for its color mark registration, the TOURNA GRIP product was the most popular tennis grip tape on the market, with sales of the product making up the majority of the market. The product remains highly successful today, and is endorsed by such tennis stars as Pete Sampras, Venus Williams, and James Blake.
Ferrari Importing Company d/b/a Gamma Sports (“Gamma”) markets a different type of tennis racket grip, called gauze tape. This product differs from Unique’s racket grip tape in that it has the woven appearance of medical gauze, is tacky to the touch, does not provide additional cushioning, and does not absorb moisture. Gamma’s gauze tape product also is light blue in color, albeit a different shade.
Based on images of the parties’ products as they are offered for sale online, the products appear as follows:
|Unique’s TOURNA GRIP||Gamma’s Gauze Tape|
Unique filed suit against Gamma, alleging trademark infringement of its registered light blue color mark. After a two-day bench trial, the district court denied Unique’s infringement claim and rejected Gamma’s affirmative defense that Unique’s color mark was invalid. Unique Sports Products, Inc. v. Ferrari Importing Company d/b/a Gamma Sports, No. 1:09-CV-660-TWT, 2011 WL 5156798 (N.D. Ga. Oct. 27, 2011). (more…)