On March 19, the United States Court of Appeals for the Ninth Circuit reversed a decision by a lower court that found the term red gold to be generic.

Solid 21, on behalf of Chris Aire Fine Jewelry and Timepieces, sued Breitling in January 2011 over the watch company’s use of red gold, which Aire called a registered trademark. The suit was one of 15 cases filed by Solid 21 over the term, against such noted names as Swatch, Bulgari, LVMH Moet Hennessy, and Louis Vuitton.

In July 2011, a California federal judge ruled in favor of Breitling’s motion to dismiss, finding that the term red gold is “generic and therefore unprotectable.” 

However, the Appeals court reversed that ruling, arguing that, because Aire had registered a mark for red gold, it was entitled to a “strong presumption” the mark is not generic. 

The registration “shifts the burden to Breitling to show ‘by a preponderance of the evidence’ that the mark is not protectable,” the court said. 

“We’ve worked very hard to build our brand within the confines of the law, and no company should be allowed to just come in and take that away from us,” Aire said in a statement. “We are not trying to monopolize the look. We simply want to protect our brand, our name, and our work.”

Michael R. Heimbold, counsel for Breitling as well as several other brands involved in this litigation, tells JCK: “The Ninth Circuit’s decision was based entirely on procedural grounds and only serves to delay the inevitable finding that the ‘Red Gold’ trademark is generic and invalid.  We look forward to Breitling prevailing once again in the District Court.” 

Rob Bates

JCK News Director