American Biltrite sued Linatex, seeking to cancel Linatex 2019s trademark registration for the color red for rubber products used in mining equipment. The two companies compete directly with one another in selling rubber products for industrial applications including mining and minerals processing. American Biltrite claims to have sold more than $20 million in solid red rubber products since 1991, and that numerous third parties also sell red rubber products into that market. In 2014, Linatex filed a trademark application for the color red on rubber products. In its application, Linatex asserted that, to its knowledge, no one else had the right to use the color red for rubber products in the mining and processing field. Further, to overcome a rejection that the color was not inherently distinctive, Linatex asserted that it had become distinctive through Linatex 2019s substantially exclusive and continuous use in commerce for the preceding five years. American Biltrite asserts that each of these statements was knowingly false, as Linatex was aware of both its and third parties 2019 red rubber products that were sold both before and throughout the five-year period of time. American Biltrite further asserts that the color is merely ornamental and does not serve as s designator of source, and that red is functional as a universal symbol of caution and increases the visibility of the rubber products, improving safety. American Biltrite notes that, faced with its opposed the application based on lack of acquired distinctiveness and fraud, Linatex expressly abandoned the application. Linatex subsequently filed a new application for the color red, this time limiting the scope to rubber used in mining and minerals processing equipment. During prosecution, Linatex again asserted five years of substantially exclusive use, without notifying the examining attorney of the prior, abandoned application and the opposition thereto, and the application was granted registration in 2017. Linatex thereafter notified customers of American Biltrite that it had the exclusive right to the color red for rubber products used in the mining industry. American Biltrite asserts lack of distinctiveness and two counts of fraud on the PTO. American Biltrite also seeks damages under 35 U.S.C. 1120 for the false or fraudulent registration.
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