No Evident Infringement in Tennis Gear Dispute

ATLANTA (CN) - A company that sells a tennis gauze product will not have to face trademark-infringement claims from the makers of Tourna Grip racket padding, which counts world-class tennis players among its fans, a federal judge ruled.

Claiming that Tourna Grip boasts a distinctive light blue color, Unique Sports Products sued Ferrari Importing Company dba Gamma Sports for trademark infringement.

Tennis players can wrap Tourna Grip around the grip of their rackets to provide additional cushioning and moisture absorption. The product has been manufactured and sold in light blue since 1977 by a company Unique acquired in 1992.

According to Unique's complaint, Tourna Grip is preferred by many professional tennis players, including Pete Sampras, Andre Agassi, Venus Williams and Maria Sharapova.

"In 1999 when Unique applied for a trademark, Tourna Grip was the most successful tennis grip tape product, with over 50 percent of the market and $40 million in cumulative sales," the court noted. "Tourna Grip continues to be the most successful tennis grip tape product."

Unique received a federal trademark registration for the color light blue used for "grip tape for sports rackets" in February 2001.

Ferrari, a company that sells specialty sporting goods accessories, offers a gauze tape in a light blue-green color. Like its competitor Unique, Ferrari advertises the product in tennis magazines, sporting goods catalogs and on the Internet.

Unique, which spends about $250,000 a year on advertisements that emphasize Tourna Grip's light blue color, among other attributes, claimed that Ferrari's product infringed on its registered trademark. Unique argued that the light blue color distinguished its product from other companies' similar products and thus had secondary meaning, which connects the mark to the product's maker in the consumer's mind.

But Ferrari countered that other companies sold light blue grip tape before Unique's mark acquired secondary meaning.

U.S. District Judge Thomas Thrash agreed that Unique had a valid trademark, but said Ferrari did not infringe on it. Unique had spent millions of dollars promoting a connection between Tourna Grip and the light blue mark. The company's ads use expressions such as "the blue Tourna Grip," "blue tape" and "the original light blue grip," which made the product recognizable by its color, according to the Oct. 27 order.

"The plaintiff has shown that it has marketed light blue Tourna Grip since 1977, that it made considerable efforts to associate the light blue mark with Tourna Grip, and that its use of the mark has been substantially exclusive," Thrash wrote. "Thus, light blue acquired secondary meaning. For this reason, Unique's light blue trademark is valid."

But Ferrari's grip tape products, which feature various shades of blue, are not confusingly similar to Tourna Grip, Thrash found, noting that Ferrari's gauze tape is almost teal, while Tourna Grip has a purple hue.

Shade is not the only attribute that distinguishes the two products. Unlike Unique's Tourna Grip, which is smooth, has a speckled appearance and provides moisture absorption, Ferrari's tape has a rough woven appearance and does not absorb moisture as well as Tourna Grip, Thrash added. Wraps like Tourna Grip are also softer, thicker and provide more cushioning than gauze tape. And while Tourna Grip is affixed to the racket handle by a separate piece of tape, gauze is self-adhesive, the order states.

Unique and Ferrari may have similar methods of advertising, but "the packaging of the products makes it virtually impossible to confuse the source of the product as it is offered for sale," Thrash noted.

"Due to differences in appearance, feel, and performance [between Tourna Grip and gauze tape], consumers generally prefer one or the other," he wrote.

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