In December, you may recall, I blogged about Boise State’s federal registration of the color blue as applied to athletic field turf, known to many as Smurf Turf. At the time, I wondered out loud whether Boise State’s success in the U.S. Trademark Office might lead others to follow along this trademark path?

Hat tip again to Brad Frazer, for letting us know that last week, apparently inspired by Boise State’s success and notoriety, Eastern Washington University, located in Cheny, Washington, announced its "Red Turf" project for its Woodward Field, shown below:

The plan, supported by a generous $500,000 gift from Eagle alum Michael Roos of the Tennessee Titans and his wife Katherine, has targeted completion in time for the opening of the 2010 football season, if all goes well with additional fund-raising efforts. The red artificial turf promises to be the first of its kind, not just in NCAA Division I football, but in the entire country, so the path appears clear for claiming, or I should say, at least working toward claiming, exclusive rights in the red-colored athletic turf.

Given how some have predicted this plan promises to cause a run on multi-colored turf by publicity-starved schools, I’m left wondering whether Eastern Washington will seek ownership and file an application to federally-register red in the same way that Boise State did with blue. Of course, one of the differences between the two is about twenty some years of use and notoriety.

A long period of substantially exclusive use goes a long way to establishing acquired distinctiveness when dealing with non-traditional trademarks such as single-color marks. Along those lines, it is worth noting the U.S. Supreme Court has indicated in Wal-Mart v. Samara that single colors can never be considered inherently distinctive, so Eastern Washington would have to establish secondary meaning or acquired distinctiveness in the red turf, as Boise State did with blue, before any registration on the Principal Register could issue.

In addition, since the proposed single color red turf mark is not in use yet, Eastern Washington could file an intent-to-use application, and assuming it could acquire distinctiveness or establish secondary meaning in the red-colored turf during the pendency of the application, the filing date would relate back and serve as its nationwide constructive use date for national priority purposes. The problem with not filing such an application is, if another athletic program were to do so before Eastern Washington was able to complete the project and provide athletic events on the new turf, it may find itself in the undesirable position as the second-comer for priority purposes, even though it might have been the first to come up with the idea for a red turf athletic field.

Sounds to me like a job for a team of creative trademark, marketing and PR types, to accelerate the period of time needed to develop the necessary evidence of acquired distinctiveness.

  • James Mahoney

    I guess I gotta wonder: What’s the point? I mean, really, what’s the point? I s’pose these schools are thinking, “Gee, every time anyone sees a [fill in the blank] field, they’ll know it’s the Podunk Community College Rabid Rascals playin’. We’ll be famous!”
    This whole obsession of folks seduced by the idea that their brainstorms are precious commodities (“threepeat” anyone?) really needs a reality check. I’m reminded of an old boss of mine who used to play the investment game, and I’ll use his actual experience as a parable:
    Every day, he’d be looking at “the market”, watching this and moving on that. He owned penny stocks in a copper mine in The Philippines (I am not kidding), as well as some other stellar investments. At the end of the year, he proudly told me that he’d made $500 on the market that year, so all his diligence paid off. I pointed out to him that if he divided his spoils by all the time he spent working at it, it’d come out to about a buck an hour. He looked at me quizzically and didn’t respond, but I knew the light had dawned.
    So whether it’s blue turf or red, is it really worth the effort? I guess if you’re the school’s trademark attorney, or a closet Steve-Jobs-wannabe athletic director it is. And I have some nice stock in a Philippine copper mine for you, too…

  • Randall Hull

    Wow, that’s a lotta red to behold. I wasn’t that jazzed about BSU’s Blue-to-the-max carpet job, er, field turf. I had this strange phosphene after-image when I looked away from the TV during one of their games. Now that lingering chromatic effect is going to be exacerbated by the intensity of red on TV.
    I keep hearing voices…”redrum, redrum, redrum”.