Back in December we wrote about a trademark infringement case (Weems v. Plews) involving claimed exclusive rights in the color chartreuse as applied to various kinds of hoses.

Since then, Plews has been busy trying to short circuit the case and have the unregistered (common law) trademark infringement claims dismissed, contending Weems did not adequately plead that the color is nonfunctional.

Non-functionality is a required allegation for those claims involving infringement of claimed common law rights — infringement claims based on a Principal Registration, however, don’t require the allegation, since it is believed the USPTO already has determined the question.

Yet, as we have noted before, functionality, if proven, is a ticking time bomb, and it will destroy federally-registered rights no matter how long ago the USPTO issued the registration.

The problem with an early motion to dismiss is that the Court must accept all factual allegations as true and draw all reasonable inferences in favor of the non-moving party: Weems.

So, not surprisingly, the Court denied Plews’ motion to dismiss the common law trademark infringement claims, for now, but I suspect after extensive discovery has been conducted in the case, Plews will attempt a motion for summary judgement to avoid the need for a trial. If so, at that time, the Court will not have to accept as true the allegation of non-functionality, it will have to examine the evidence to see whether functionality remains as a genuine issue for trial.

Meanwhile, Weems has been busy at the USPTO trying to convince the assigned Examining Attorney that the color chartreuse has acquired distinctiveness in garden hoses too, not just the previously federally-registered compressed air hoses. Early in April, Weems filed argument and evidence totaling 153 pages, but no decision there yet.

So, continue to stay tuned, this case shows no sign of trickling to an end any time soon.