— Jessica Gutierrez Alm, Attorney

If you watch any amount of T.V. or happened to catch either of the AFC or NFC Championship games last weekend, you’ve probably seen one of the recent cell phone carrier ball commercials.

Initially, Verizon created this commercial, wherein a series of colorful balls rolling down a ramp are used to describe Verizon’s apparently superior performance in a study:




Verizon clearly demonstrates that its balls are larger and more plentiful than those of T-Mobile, Sprint, and AT&T.

In response, T-Mobile ran this ad, using similarly colored balls and a similar ramp to describe “the rest of the story” from the same study.  It seems now that T-Mobile is the carrier with an abundance of balls:




Ultimately, Sprint jumped in the ball pit too with this commercial, illustrating that it has the fastest balls, according to a different study:




Each of the commercials uses similar visuals, music, and even sound effects.  Potential copyright and false advertising issues aside, what struck me about this series of commercials is the strength of the networks’ colors.

Each of these companies has developed such a strong color identifier that, although the voice-over names the other companies, it does not blatantly draw the correlation for the viewer.  It’s immediately apparent which balls represent which network.

From a quick search, it appears that T-Mobile is the only one of the four networks to have sought federal registration of its color mark.  But enforcement of a trademark does not necessarily require federal registration.

This identification of competing brands by their colors suggests an interesting question of nominative fair use.  Nominative fair use is an affirmative defense to trademark infringement that provides for use of another’s mark for comparison or identification purposes.  A typical example of nominative fair use is a car repair shop that specializes in repairing Volkswagens, for example.  Under nominative fair use, the repair shop can advertise that it specializes in repairing Volkswagen vehicles.  Of course the defense does have limits.  The test for nominative fair use requires:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

We’ve written about nominative fair use of non-traditional trademarks before.  See here and here, for example.  But in those cases, the marks were being used as a prop to help sell unrelated goods or services.  In contrast, in the above commercials, the colors are being used for the purpose of comparing competing companies.  Verizon’s use of the T-Mobile magenta, for example, is for the purpose of identifying T-Mobile as a lesser service provider.

Before we can decide if the colored balls qualify as nominative fair use, however, we first have to determine if this is a trademark “use” to begin with.  Does Verizon’s portrayal of the magenta, orange, and blue balls to illustrate other networks constitute a use of the companies’ color marks?  After all, Verizon is not using T-Mobile’s magenta, Sprint’s orange, or AT&T’s blue to depict a product, packaging, or store trade dress.  It’s simply a series of colorful balls rolling down a ramp.  Even if the colored balls alone are not a trademark use, does it become a trademark use when coupled with the voice-over discussing each company’s study results?

The fact that this use is for purposes of comparing competing phone services seems to suggest that the colored balls are “uses” of the color marks, prompting the further question of whether it is a nominative fair use.

What do you think?  Is this what nominative fair use of a color mark looks like?