T-Mobile US, Inc. v. Aio Wireless LLC (991 F. Supp. 2d 888, 2014)

MEMORANDUM OPINION SETTING OUT FINDINGS OF FACT AND CONCLUSIONS OF LAW

LEE H. ROSENTHAL, District Judge.

The plaintiffs, T-Mobile US, Inc., T-Mobile USA, Inc., and Deutsche Telekom AG (together, “T-Mobile”), moved for a preliminary injunction to stop the defendant, Aio Wireless LLC, from using a plum color as a central part of its trade dress for consumer wireless telecommunications services and products. Telecommunications companies use color as an integral part of elaborate marketing campaigns to identify the sources for various consumer products and services. Familiar examples include ‘Verizon red,” “Sprint yellow,” “AT & T orange,” and “T-Mobile magenta.”

T-Mobile seeks to protect its trademarked use of magenta from what it alleges is Aio’s infringing use of a confusingly similar plum color.

The products and services at issue are wireless cellular phone communications not tied to particular devices or to long-term contracts with particular carriers. Such no-contract services are relatively new and the competition among service providers is intense. Aio is a new AT & T subsidiary competing with T-Mobile in this area. Aio’s launch of its initial marketing campaign prominently features large blocks or swaths of its plum color. T-Mobile’s marketing prominently features large blocks or swaths of its magenta color. T-Mobile alleges that AT & T’s plum — Pantone 676C — is so close to T-Mobile’s trademarked magenta — Pantone Process Magenta — that it infringes the T-Mobile mark, dilutes its strength, and likely causes confusion among consumers. Aio responds by attacking the validity of T-Mobile’s magenta mark and denying that it has acquired secondary meaning. Aio also argues that the marketing changes it has made since this suit was filed, greatly reducing its use of the plum color, moot the issues.

Both sides have provided the court with excellent briefs on the legal issues and thorough submissions substantiating their factual claims. Based on the pleadings, the application for the preliminary injunction and the response, the extensive briefing and submissions, the testimony, arguments, and exhibits presented at the three-day evidentiary hearing, the post-hearing briefs and submissions, and the applicable law, the court enters findings of fact and conclusions of law. Based on the findings and conclusions, the court grants the motion for a preliminary injunction on the terms and conditions set out below, which take into account the marketing changes Aio made during this litigation.

1. Procedural Background: The Evidence in the Record

T-Mobile filed its complaint on August 23, 2013. (Docket Entry No. 1). On September 4, 2013, T-Mobile filed an amended complaint, motion for preliminary injunction, and motion for expedited hearing on that motion. (Docket Entry Nos, 18,19, & 24). The motion for preliminary injunction included expert reports from Dr. Susan Schwartz McDonald, a survey research and marketing expert who advises companies on brand strategy and marketing; Sarah Butler of NERA economic consulting, who researches and provides marketing analyses of consumers’ decisionmaking processes; and Dr. Bruce Isaacson of MMR Strategy Marketing, who is an expert in survey research and marketing. (Docket Entry No. 20, Exs. 3-5). On September 13, 2013, in a videoconference hearing with all parties, the court set a scheduling order with deadlines for completing fact and expert discovery and for filing briefs, and with a date for a preliminary injunction hearing. (Docket Entry No. 46). The schedule was followed with minor deviations.

On November 1, 2013, Aio filed its opposition brief. (Docket Entry No. 76). Aio supported its opposition with declarations from Dr. Robert A. Paterson, who specializes in marketing and survey research; and reports from Dr. Erich Joachimsthaler, who has been a professional in the brand and marketing field for more than 20 years; Dr. Daniel J. Howard, an expert in the empirical study of marketing; Dr. Roy S. Berns, a “color scientist”; and Dr. Michael J. Tarr, an expert in visual perception and cognition. Aio also attached the declaration and deposition of Dr. Shari Seidman Diamond, a Professor of Law and Psychology at Northwestern University. (Docket Entry No. 77, Exs. 1-9). With its reply brief, T-Mobile submitted a supplemental report from Sarah Butler and a report from Dr. Dhruv Grewal, an expert on value-based marketing and marketing research. (Docket Entry No. 89, Exs. 39, 41). The court permitted Aio to submit supplemental reports from Dr. Howard, Dr. Tarr, Dr. Berns, and Dr. Joachimsthaler. (Docket Entry Nos. 95-98).

A three-day evidentiary hearing was held from November 12 to November 14, 2013. At the evidentiary hearing, the court heard testimony from T-Mobile’s Senior Vice-President of Brand & Advertising, Peter DeLuca. The parties argued the inferences to be drawn from the extensive evidence on how the parties and industry use color in their trade dress and marketing.

At the end of the three-day hearing, the court announced its tentative ruling that T-Mobile had established secondary meaning in its magenta mark and that Aio’s use of broad swaths or blocks of plum was confusingly similar and infringing. The court also indicated that it was considering a more limited injunction than T-Mobile sought, directed to Aio’s use of large swaths of its plum color rather than to all uses of the color.

After the evidentiary hearing, Aio filed a supplemental brief outlining changes in its advertising and store appearance. Aio argued that those changes made T-Mobile’s expert reports and consumer surveys obsolete and mooted the issues. T-Mobile responded that voluntary cessation of the infringing activity did not moot the claims. First, absent a court-ordered injunction, T-Mobile had no assurance that the infringing activity would not resume. Second, T-Mobile argued that the changes were insufficient to avoid infringement. Third, T-Mobile argued that the changes both conceded infringement and showed a lack of substantial harm to Aio should the injunction issue.

The court ordered the parties to answer specific questions about the extent and effect of Aio’s marketing changes on T-Mobile’s claim for injunctive relief. Aio’s response emphasized that it objected to any injunction, “even one that tracks changes already being made by the business.” (Docket Entry No. 128 at 2). Aio also asked that any injunction be stayed pending an interlocutory appeal to the Fifth Circuit.

For the reasons that follow, the court finds and concludes that T-Mobile magenta has acquired secondary meaning in the marketplace and that T-Mobile has demonstrated a substantial likelihood of success on the merits of its unfair-competition claim under the Lanham Act. The court finds and concludes that Aio’s use of broad swaths or blocks of its plum color will likely cause confusion between Aio and T~ Mobile and that the loss of goodwill and potential customers poses a substantial threat of irreparable injury to T-Mobile that outweighs the costs Aio will incur from the injunction. The injunction, issued under separate order, is limited to Aio’s use in marketing of large swaths or blocks of its plum color that dominate Aio’s advertisements, websites, and stores when Aio launched its marketing. This limited scope, and Aio’s posthearing marketing changes, together lead the court to find that the impact on Aio does not weigh against the injunction’s issuance. Finally, the court concludes that the injunction serves the public interest in upholding the mark protections provided by the Lanham Act.

Findings of Fact

II. The Industry

Within the consumer wireless-telecommunications industry, the major product and service providers use colors as important source indicators in their marketing. (Deck of Peter DeLuea¶29). Particular colors are an important part of each provider’s visual brand identity and trade dress. (Id., Exs. 32, 33). The association of specific colors to certain providers is so common that these providers use those colors to make interbrand comparisons. (Id., Ex. 34). The record contains evidence that T-Mobile runs advertisements comparing itself to its competitors using color to represent a few competitor companies, confident that consumers associate those specific colors with the specific brands. A T-Mobile holiday commercial in December 2012 shows a line of Christmas stockings, each colored with a shade of blue, yellow, red, and magenta; these colors are associated with the major competitors in the wireless telecommunications industry, AT & T, Sprint, Verizon, and T-Mobile. (Id., Ex. 17). An advertisement that ran during the fall 2012 election season showed a line of voting booths, each with a different color curtain: blue, yellow, red, and magenta. The tag line: “Vote Magenta.” (Id., Ex. 16). T-Mobile’s major competitors operate similarly. At the evidentiary hearing, T-Mobile played a Verizon commercial using colors identified with particular wireless telecommunications providers to symbolize and differentiate the major competing brands. (Plaintiffs Hearing Ex. 1). Exhibits to DeLuea’s declaration show an Alltell Wireless commercial in which T-Mobile is represented by a character wearing a magenta shirt. An advertisement put out by companies opposed to a potential merger of AT & T and T-Mobile showed a large man smoking a cigar and wearing a magenta dress. (DeLuca Deck, ¶¶ 31, 33, Exs. 35, 37).

At the evidentiary hearing, T-Mobile’s Senior Vice-President of Brand & Advertising, Peter DeLuca, testified about the use and importance of color in the wireless-telecommunications industry. DeLuea has over 25 years of experience in “brand creation and development, brand management, marketing, and advertising” in the industry. (Id. ¶ 1). He credibly testified that companies in this industry “leverage” color to manage and define their brands. Consumers use color to distinguish one brand from others. (Tr. 200). DeLuca testified that while many industries use specific colors as part of their marketing, this is especially true in the wireless-telecommunications industry. (Id. (“[T]he wireless category, is probably one of the key categories that absolutely is leveraging color within it to market today.”)).

T-Mobile has submitted voluminous exhibits that demonstrate what DeLuca described. T-Mobile and its competitors use specific colors in marketing to identify each company and the products and services offered. The record evidence shows that both T-Mobile and Aio have invested large amounts of money, work, and time developing and implementing marketing around a particular color. This court finds that within the wireless-telecommunications industry, the major providers use a particular color that is deliberately chosen and developed at great expense as a critical way to distinguish that company’s brand, products, and services from competitors and to gain a competitive advantage in marketing those products and services.

III. The Parties and Their Trademarked Colors

A. Deutsche Telekom AG and T-Mobile

Deutsche Telekom AG (“DT”) is a global telecommunications company that serves over 140 million mobile-telecommunications customers worldwide. (Docket Entry No, 22, Dr. Axel Luetzner Deck ¶4, Ex. 1). In 1990, DT developed the magenta mark to distinguish itself from other telecommunications companies because that color had not been used in the telecommunications industry. (Id., ¶ 5). In the early 1990s, when Deutsche Telekom chose magenta, internal Deutsche Telekom discussions, the German press, and the German public considered the color unusual and bold. (Docket Entry No. 89-34, Tobias Schmidt Reply Deck ¶4). One German press release called T-Mobile magenta “piggy-pink” and stated that “Telekom got this idea because the colour has not yet been used by other companies, hence there is no danger of confusion.” (Docket Entry No. 105, Evidentiary Hearing Ex. 7 (German article with English translation)). Deutsche Telekom has spent billions of dollars developing and using the color mark. (Luetzner Deck ¶ 6).

T-Mobile USA, Inc. (“TM-USA”) is an affiliate of Deutsche Telekom. In 2002, TM-USA began selling telecommunications products and services in the United States under the T-Mobile name, using Pantone Process Magenta as an important part of its marketing. (DeLuca Deck ¶ 6). In 2007, T-Mobile registered the magenta mark on the Supplemental Register and has registered later iterations incorporating the mark with other elements to identify its telecommunications services. (Docket Entry No. 20, Deck of Stitt, ¶¶ 2-3, Exs. 1-2). On July 10, 2007, Deutsche Telekom registered on the Supplemental Register “the color magenta alone,” which was described as the “approximate equivalent of Pantone Matching System, Rhodamine Red U, as applied to a portion of the packaging for the goods,” {id., Ex. 1, Reg. No. 3,263,624), and as “used on the background of product displays and advertisements found in a store,” {id., Reg. No. 3,263,635).

At the evidentiary hearing, Aio argued that if T-Mobile had a valid mark in any color, it applied only to Rhodamine Red U, not Pantone Process Magenta. There are at least three problems with this argument. First, the supplemental registration itself identifies the “color magenta alone” and describes it as the “approximate equivalent” to Rhodamine Red U. The Pantone system, as the language in the registration reflects and as confirmed by other courts, serves as an approximation for registration, not a limit on use. Second, DeLuca credibly testified that before the hearing, he was unaware of the registration statements that describe magenta as Rhodamine Red U. He testified that T-Mobile magenta is based on Pan-tone Process Magenta, and that T-Mobile only used Pantone Process Magenta. (Tr. 226, 251-52). Third, Tobias Schmidt, the Vice President of Brand Management for Deutsche Telekom, credibly testified that the magenta mark may have different labels but that the company has consistently used Pantone Process Magenta as its brand’s color, (Docket Entry No. 89-34 ¶¶ 9-10).

This court finds and concludes that the Supplemental Register’s reference to Rhodamine Red U does not limit the mark protections T-Mobile seeks. Additionally, the court finds and concludes that T-Mobile has used Pantone Process Magenta in developing its visual-brand identity in the United States.

From 2002 to the present, T-Mobile has used the magenta mark prominently in every major advertising campaign. (De-Luca Deck ¶ 6). T-Mobile uses a wide range of paid advertising across a wide variety of media to reach consumers, targeting those between 18 and 49 years old. (DeLuca Deck ¶ 8). As of November 2013, at the time of the prehminary-injunction hearing, T-Mobile had spent approximately $500 million in advertising in 2013. (Tr. 203). In 2012, T-Mobile spent approximately $688 million. (Tr. 204). Since its 2002 United States launch, T-Mobile has spent approximately $4 billion in advertising. {Id.). The vast majority of the advertising prominently featured the magenta mark. {Id.).

In 2013, T-Mobile served approximately 43 million customers. It has sold over $ 130 billion in telecommunication services and goods in the United States since 2006, with $19 billion in sales in 2012 alone. (DeLuca Deck ¶ 27).

T-Mobile advertises on television, changing its commercials as its products and services change and with the seasons. {Id., ¶¶ 26-27). The internet is heavily used, from banners on webpages like Google, AOL, Yahoo!, and CNET, to social media such as Twitter and Facebook. In 2013, T-Mobile had 223,576 followers on Twitter, 4.1 million “likes” on Facebook, and an average of 14 million unique monthly visitors to its webpage. {Id., ¶ 7). T-Mobile uses digital video, such as YouTube and Hulu, to advertise on various devices. T-Mobile advertises in newspapers, magazines, and other printed and on-line publications. T-Mobile also makes heavy use of outdoor billboards and indoor billboard-like signs and displays. T-Mobile advertisements appear on public transportation, such as the sides of buses and on taxicabs. (Tr. 197). In the vast majority of its marketing, T-Mobile prominently features large blocks or swaths of its trademarked bright-pink magenta, (Id.).

T-Mobile has even extended its use of the magenta color to radio advertising. A radio advertisement played on the Saturday before “black” Friday — the heavy shopping day after Thanksgiving — promoted “Magenta Saturday.” (Tr. 204).

The record evidence details T-Mobile’s long, extensive, and consistent use of Pan-tone Process Magenta in its United States advertising since 2002. In 2003, a well-known actress was featured in an advertisement with the magenta mark. (DeLuca Deck ¶ 12, Ex. 4). In 2004, T-Mobile used the color magenta to advertise the nationwide expansion of T-Mobile “Hot Spots” and the “Family Talk Free” wireless plan. (Id., ¶ 13, Exs. 5, 6). In 2005, magenta was used prominently in T-Mobile’s “Whenever Minutes” campaign. (Id., ¶ 14, Exs. 7, 8). In 2006, the “my-Faves” campaign used magenta in nationwide television and print advertisements. (Id., ¶ 15, Ex. 9). In 2008, T-Mobile launched the “myFaves Family Plan” campaign, followed by a campaign to promote T-Mobile’s first “Google” phone the following year. (Id., ¶ 16, Exs. 10, 11). In 2010, T-Mobile launched nationwide campaigns to promote “America’s Largest 4G Network” and “Step Up to 4G” expanded wireless coverage. (Id., ¶ 17, Exs. 12, 13). All these campaigns prominently featured large blocks or swaths of the trademarked magenta color.

DeLuca testified about specific T-Mobile advertising campaigns beginning in 2010. When T-Mobile was ready to launch nationwide coverage on the 4G network, it developed a new advertising campaign centering on a character named Carly. Each of this character’s two versions wore magenta clothing. (Tr. 213). Carly 1.0 wore a magenta dress; Carly 2.0 wore a black and magenta leather bike suit and drove a black and magenta motorcycle. (Tr. 214). At the evidentiary hearing, T-Mobile played several “Carly” commercials prominently featuring large blocks of Pantone Process Magenta.

During the 2011 holiday season, T-Mobile ran an ad featuring more than 100 women wearing magenta and another commercial featuring a magenta-decorated “Santa’s Workshop” complete with elves dressed in silver and magenta, wrapping presents with magenta bows. (DeLuca Deck ¶ 18, Exs. 14, 15; www.youtube.com/ watch?v=3YxEZotxIqg, www.youtube. com/watch?v=AWO-L5soj4s). In 2012, T-Mobile’s advertisements included a fall campaign that asked consumers to “Vote Magenta” and a holiday campaign featuring four stockings, each a different color, representing four different wireless carriers. T-Mobile was represented by the Pantone Process Magenta-colored stocking. (Id., ¶ 19, Exs. 16,17).

The 2013 advertising was similar. In early 2013, T-Mobile began an advertising campaign identifying itself as the “UnCarrier” to promote its elimination of two-year service contracts. (Id., ¶ 9, Ex. 1), These advertisements consist of the T-Mobile logo and slogans on a magenta background. (Id.). T-Mobile also launched the “Jump!” campaign, promoting a program permitting consumers to upgrade their phones twice a year. (Id., ¶ 10). Magenta was used prominently in these advertisements. (Id., Ex. 2). The heavily magenta “Carly” advertising campaign continued through 2013. (Id. ¶ 11).

T-Mobile’s marketing includes company-sponsored activities and events. The 2011 National Basketball Association All-Star game is a good example. The arena was changed to replace the “red carpet” with a Pantone Process Magenta carpet, clearly and prominently visible in the televised game. (DeLuca Deck ¶ 21, Ex. 19). T-Mobile recently announced a Major League Baseball sponsorship. An article describing this sponsorship was titled “T-Mobile gives MLB a magenta makeover with multiyear partnership” and stated that “the magenta carrier will provide an on-field communications system that links team managers in the dugout to coaches in the bullpen.” (Id., Ex. 20). In 2013, T-Mobile sponsored a Shakira concert in Manhattan’s Bryant Park. (Tr. 221). T-Mobile “created [a] magenta spectacle where [it] uplit the entire park in magenta as well as erecting 40 foot screens that also contain[ed] magenta messaging at the park that night.” (Id.). The effect was to make midtown Manhattan appear awash in magenta. T-Mobile spent several million dollars on this event, a significant part on the lighting display. (Id.).

Over 90% of T-Mobile products and services are purchased in brick-and-mortar stores, including retail outlets such as Wal-Mart and Target. (Tr. 212). Large blocks or swaths of Pantone Process Magenta predominate the T-Mobile stores’ appearance. Blocks of monochromatic magenta are frequently used in large signs and displays. The stores use Pantone Process Magenta on signs, displays, and lighting. In addition, magenta is in virtually every visual display at least as a prominent accent. The T-Mobile stores brim magenta.

T-Mobile uses monochromatic blocks of magenta in many promotional materials, ranging from clothing to drink containers to mouse pads. While T-Mobile also uses other colors and other distinguishing marks in its advertisements and materials, these other colors and marks are usually in combination with a predominant presence of Pantone Process Magenta on the advertisement, website, commercial, sign, or other marketing display. In short, other colors or marks generally appear in addition to Pantone Process Magenta, not instead of it or more prominently than it.

The recognition T-Mobile’s use of Pan-tone Process Magenta has achieved as a brand identifier is exemplified in news commentary about the T-Mobile color trademark. An article from colormaters.com stated that:

T-Mobile’s magenta (hot pink) is an unexpected color in the crowded cellular communications marketplace. Risky but it does succeed in creating a unique identity of the brands.

(DeLuca Deck ¶ 28, Ex. 28). The New York Times and Bloomberg have also run articles discussing the T-Mobile magenta mark. (Id., ¶ 22, Ex. 22, 23). The Bloomberg article, titled “T-Mobile Helps Customers Fall Into Savings,” discusses a September 2012 sale on T-Mobile products and services by referring to the “ ‘Magenta Deal Days’ Zero Down promotion.’ ” (Id., Ex. 23). A November 2011 New York Times article, titled “For Some Marketers, Brand Investment Beats Black Friday,” noted that “T-Mobile USA declared last Saturday to be ‘Magenta Saturday,’ offering sales on smartphones and tablets. The campaign replaced ‘black’ with the T-Mobile brand color, magenta.” (Id., Ex. 22). Prominent media outlets have recognized magenta as an important and distinctive part of the T-Mobile brand.

The court finds that T-Mobile has prominently displayed and leveraged the magenta mark in extensive and expensive advertising campaigns, marketing, and store appearance since the American launch in 2002. T-Mobile has consistently and effectively used the magenta mark as a brand identifier for a nationwide audience of consumers and potential consumers. For more than 10 years, T-Mobile has successfully invested large sums of money and effort to make Pantone Process Magenta a widely and quickly recognized source identifier for the products and services the company markets in the United States.

B. Say Hello to Aio

In 2013, T-Mobile announced that it would start offering wireless cellular telephone and other telecommunications services without annual contracts to attract “budget-conscious consumers.” (Tr. 105; DeLuca Decl. ¶ 9). The decision to provide such services was a decision to compete against AT & T in a “new and unconventional way.” (Tr. 105). In May 2013, AT & T entered the market to compete with T-Mobile for customers who wanted to access to such services. (DeLuca Decl. ¶¶ 34, 35, Exs. 38-40). On May 9, 2013, the Associated Press remarked AT & T had followed “T-Mobile’s decision in March to move away from contract-based plans to appeal to more consumers.” (Id., Ex. 39). With this new approach, T-Mobile and AT & T customers can change service providers frequently and can do so without purchasing a new cell phone or other device.

AT & T created Aio to provide consumers with wireless cellular services without long-term service contracts. Aio was created as a “flanker” brand because AT & T did not want to “cannibalize” its own customers. AT & T wanted to use Aio to attract and capture consumers who were not currently contracting with AT & T.

Like the existing major telecommunications carriers, AT & T picked a color to brand Aio before launching its marketing campaign. After extensive review and study, including using focus groups and comparing the colors other carriers — including T-Mobile — used, AT & T selected the plum color formally identified as Pan-tone 676C. AT & T used the company Interbrand, which “creat[es] and manag[es] brand value,” to explore and develop Aio’s brand identity and visual personality. This work was done under the name “Project Zig.”

[redacted]

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[redacted]Interbrand prepared an October 2012 “Presentation to the Executive Officers.” (Id., Ex. 12). That presentation recognized that all “primary and secondary colors (red, yellow, blue, green, orange) except violet are owned in the prepaid/wireless space.” Interbrand suggested using a color pallette that included Aio plum along-side gold (Pantone 110), turquoise (Pantone 7709), white, and black.

Aio went with that color pallette. Internal Interbrand emails summarizing the response to various branding concepts noted concerns that some of the colors suggested were either too close to competitors’ color marks or too close to AT & T’s own signature orange color. A September 6, 2012, internal Interbrand email indicated that AT & T thought “orange [wa]s too close to home, Iove[d] the turquoise, like green but can’t look like Cricket.” (Docket Entry No. 74-23 (bold in original)). Am email sent from [redacted] to [redacted] on September 25, 2012, stated that AT & T executives were “struggling a bit with the color,” thinking “it’s too pink.” (Docket Entry No. 74-20). That concern was circulated through Interbrand the next day in an email that stated [redacted] (“struggling with the color as she thinks it’s too pink.” (Docket Entry No. 74-21)). Almost a month later, in October 2012, AT & T still had a concern about the color. In an email to [redacted] stated that the color problem had nothing to do with “the COLOR itself but its similarity to Verizon and T-Mo.” (Docket Entry No. 74-22). [Redacted] “asked that we do a deeper comparison with our pallette (specifically the plum being the problem) against Vz and TMo.” (Id.). [Redacted] had sent an email to [redacted] which stated “Went well with [redacted] and [redacted] this am. They are concerned about the plum color ... Worried that it may be too close to TMO and VZ. I need you to pull some actual executions for VZ and TMO and compare that to our plan. I think we will be fine, we just need to show the difference.” (Id.). AT & T and its brand-development company had significant concerns that the chosen plum color was confusingly similar to T-Mobile magenta.

E-mail exchanges between AT & T corporate executives also demonstrate a conscious effort to go after T-Mobile customers while recognizing that the brand color they chose might be confusingly close to T-Mobile’s. For example, on August 29, 2013, [redacted] sent an email to [redacted] The email’s subject line was “Aio Opportunity Overview.” That email stated that “[w]ith all the attention we are getting from TMO, we’ve seen a significant increase in online traffic [and] are gearing up to take advantage of our new found opportunity — Leaning in on this one.” That email also described preparing “to go after TM[obile] customers as they are checking us out online — we are working on some creative options and vetting them with the lawyers this afternoon.” [redacted] forwarded that email to who [redacted] stated that it “Looks good. Go with it.” (Docket Entry No. 74-19).

Focus-group testing that AT & T conducted verified that the plum color was indeed too close to T-Mobile magenta and some of the respondents expressly stated as much. AT & T used a company called LatinWorks for focus-group testing commercials. LatinWorks’s notes from the Houston focus group reflected that group members were confused between Aio’s col- or and T-Mobile’s color. The comments included a statement about the “pink” in the commercial and a statement about the “pink vibe at beginning.” This reviewer thought “[I]t was [T-]mobile. Later realized it was a different company.” (Id., Ex. 15, 323). The reviewer found that the “pink color was strong, reminded him of ‘Carly’.” (Id. at 324). The LatinWorks notes emphasized that the reviewer identified the pink color with T-Mobile’s Carly character. (Id. at 324). In its report on the focus groups, LatinWorks stated that the “plum color sometimes takes [members of the focus group] to T-Mobile at first but then [they] realize its Aio. The women [sic] personality also takes them to T-Mobile as she is wearing somewhat pink dress.” (Id., Ex. 16).

The record evidence shows that AT & T recognized T-Mobile’s distinctive magenta mark from the outset. AT & T chose a plum color close to T-Mobile magenta. Aio branding executives recognized early on that the plum color was similar to, and evocative of, T-Mobile magenta. The company AT & T hired for focus-group testing and analysis sent a report to AT & T highlighting that because the plum color was so similar to T-Mobile magenta, focus-group members were initially confused into thinking that the commercials were affiliated with T-Mobile.

Using large swaths or blocks of plum as a prominent part of its marketing campaign, Aio asks consumers to “Say goodbye to T-Mobile, Say hello to Aio.” Large monochromatic blocks of plum, similar to T-Mobile not only in shade but also in the use of large monochromatic blocks of a distinctive and vivid color, have been the prominent feature of Aio’s coverage maps, signs and displays in retail stores, print advertising, billboard advertising, webpages, social media, and television commercials. Aio, like T-Mobile, brims with broad swaths of bold, bright dark reddish-purple-pink that leaves a vivid impression. The result is to make Aio’s use of broad swaths of monochromatic Pantone 676C confusingly similar to T-Mobile’s use of broad swaths of monochromatic Pantone Process Magenta.

Analysis of Findings of Fact and Conclusions of Law

IV. The Legal Standards

A. The Preliminary Injunction Standard

A preliminary injunction is an “extraordinary remedy.” Texans for Free Enter. v. Tex. Ethics Comm’n, 732 F.3d 535, 536 (5th Cir.2013). A court may grant an application for a preliminary injunction “only if the movant establishes (1) a substantial likelihood of success on the merits, (2) a substantial threat of irreparable injury if the injunction is not issued, (3) that the threatened injury if the injunction is denied outweighs any harm that will result if the injunction is granted, and (4) that the grant of an injunction will not disserve the public interest.” Id. at 536-37 (quoting Byrum v. Landreth, 566 F.3d 442, 445 (5th Cir.2009)).

B. The Lanham Act Standard

A plaintiff establishes Lanham Act liability by showing that the defendant “ ‘uses in commerce any word, term, name, symbol, or device’” that is “‘likely to cause confusion, or to cause mistake’ ” about the “ ‘origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.’” See Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 309 (5th Cir.2008) (quoting 15 U.S.C. § 1125(a)(1)(A)). The analysis proceeds in two steps. The court first considers whether the plaintiff has a “protectable right in the mark” and then whether there is a “likelihood of confusion between the marks.” Id. (citing Sec. Ctr., Ltd. v. First Nat’l Sec. Ctrs., 750 F.2d 1295, 1298 (5th Cir.1985)).

Before issuing an injunction for trademark infringement, the court must consider whether (1) the claimed mark is eligible for protection, (2) the party seeking protection is the mark’s senior user, (3) there is a likelihood of confusion between the plaintiffs mark and the defendant’s mark, and (4) this likelihood of confusion will cause the plaintiff irreparable injury for which there is no adequate legal remedy. See id. (quoting Union Natl Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 844 (5th Cir.1990)). The parties do not contest that T-Mobile is the magenta mark’s senior user. Aio vigorously attacks T-Mobile’s assertion that the magenta mark is entitled to Lanham Act protection.

V. T-Mobile’s Protectable Magenta Mark

While courts, including the Supreme Court, were initially skeptical about whether a single-color mark could qualify for Lanham Act protection, that issue is now resolved. See, e.g., Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995); Christian Louboutin S.A. v. Yves Saint Laurent Amer. Holdings, Inc., 696 F.3d 206, 225 (2d Cir.2012); Bd. of Supervisors for La. State Univ. Agric. and Meek College v. Smack Apparel Co., 550 F.3d 465, 475 (5th Cir.2008). In Qualitex, the Supreme Court explained:

[O]ver time, customers may come to treat a particular color on a product or its packaging (say a color that in context seems unusual, such as pink on a firm’s insulating material or red on the head of a large industrial bolt) as signifying a brand. And, if so, that color would have come to identify and distinguish the goods — i.e., “to indicate” their “source” — much in the way that descriptive words on a product (say, “Trim” on nail clippers or “Car-Freshner” on deodorizer) can come to indicate a product’s origin.

Qualitex, 514 U.S. at 163, 115 S.Ct. 1300 (internal citations omitted). The Supreme Court could not “find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where the color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” Id. Although “a single color, standing alone, can almost never be inherently distinctive because it does not ‘almost automatically tell a customer that [it] refer[s] to a brand,’ ” Louboutin, 696 F.3d at 225 (alterations in original) (quoting Qualitex, 514 U.S. at 162-63, 115 S.Ct. 1300), “a color scheme can be protected as a trademark when it has acquired secondary meaning and is non-functional.” Bd. of Supervisors, 550 F.3d at 475 (citing Qualitex, 514 U.S. at 163-64, 115 S.Ct. 1300).

In the Fifth Circuit, a color mark is distinctive and protectable if secondary meaning is shown. Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 240 (5th Cir.2010); accord Louboutin S.A., 696 F.3d at 225-26 (“In the case of a single-color mark, therefore, distinctiveness must generally be proved by demonstrating that the mark has acquired secondary meaning.”). “ ‘Secondary meaning occurs when, in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.’” Amazing Spaces, 608 F.3d at 247 (quoting Bd. of Supervisors, 550 F.3d at 476); see also Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529

T-MOBILE US, INC. v. AIO WIRELESS LLC

Cite as 991 F.Supp.2d 888 (S.D.Tex. 2014)

905

U.S. 205, 211, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000).

The question is whether the magenta mark is a “Qualitex symbol” that distinguishes the source of T-Mobile’s goods and services from other telecommunication carriers’ goods and services. Qualitex, 514 U.S. at 166, Í15 S.Ct. 1300 (“It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”).

[7] ? Fifth Circuit applies a multifactor test for determining whether secondary meaning has been shown:

(1) length and manner of use of the mark or trade dress,

(2) volume of sales,

(3) amount and manner of advertising,

(4) nature of use of the mark or trade dress in newspapers and magazines,

(5) eonsumerrsurvey evidence,

(6) direct consumer testimony, and

(7) the defendant’s intent in copying the trade dress.

Amazing Spaces, 608 F.3d at 248. (quoting Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 541 (5th Cir.1998)). These factors are used in other circuits as well. See, e.g., Louboutin, 696 F.3d at 226. (“Factors that are relevant in determining secondary meaning include (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success,

(5) attempts to plagiarize the mark, and,

(6) length and exclusivity of the mark’s use.” (internal quotations omitted)). The Fifth Circuit’s fourth factor—the use of the mark in newspapers and magazines— is properly understood as referring to the use of the mark in the media generally.

“These factors in combination may show that consumers consider a mark to be an indicator of source even if each factor alone would not prove secondary meaning.” Bd. of Supervisors, 550 F.3d at 476 (citing Pebble Beach, 155 F.3d at 541).

[8] Whether a mark “has acquired secondary meaning [is] a question[ ] of fact.” Amazing Spaces, 608 F.3d at 235 (citation omitted). “Because the primary element of secondary meaning is a mental association in buyer[s’] minds between the alleged mark and a single source of the product, the determination whether a mark or dress has acquired secondary meaning is primarily an empirical inquiry.” Id. (quotation omitted); see also Sunbeam Prods., Inc. v. W. Bend Co., 123 F.3d 246, 253 (5th Cir.1997) (“The determination that a feature has acquired secondary meaning is a finding of fact [reviewed] for clear error.”).

[9] Considering the totality of the relevant factors, the record amply supports the factual finding that T-Mobile magenta has acquired a secondary meaning within the wireless-telecommunications industry. The first four factors strongly weigh in favor of finding secondary meaning. T-Mobile has been using the magenta mark for over 10 years. During this time, T-Mobile has prominently displayed the magenta mark in virtually every aspect of its public marketing and communications. Advertising campaigns prominently feature the magenta color, with particular emphasis on large swaths of magenta that cause the advertisements to “brim” with the color. In those advertising campaigns, T-Mobile has identified itself by the word “magenta” as well as by using large blocks

■ of the magenta color. Examples include the “Vote Magenta” advertising campaign that ran during the last election, the “Magenta Saturday Sale” campaign, and “Magenta Deal Day” campaigns. T-Mobile uses magenta, particularly large blocks of

magenta, on television, in print advertisements, and outdoor advertisements. T-Mobile has over 70,000 stores, each of which prominently features the magenta color. (DeLuea Decl. ¶ 26). T-Mobile serves 43 million customers nationwide and, in the last 8 years, has sold $130 billion worth of services and goods, (Id. at ¶26), 90% in stores, including retail outlets, that use magenta, (Tr. 212). Media coverage, including newspapers and other publications have recognized the magenta anchor to T-Mobile’s marketing and physical appearance.

The fifth factor, consumer-survey information, also supports finding that T-Mobile’s magenta mark has acquired secondary meaning. T-Mobile provided the court with consumer-survey information through the expert report of Susan Schwartz McDonald, Ph.D., president and chief executive officer of National Analysts Worldwide, an 80-person business research and marketing consultancy. Dr. McDonald’s academic expertise is in social psychology and communications theory. She has authored texts on marketing research and has published numerous articles on marketing and market-research theory. She has lectured on research methodology and marketing at Princeton University, the University of Pennsylvania, and other academic institutions. She also chaired the Board of CASRO, a U.S. industry trade association representing companies that conduct marketing and opinion research. (Stitt Decl. ¶ 4, Ex. 3).

T-Mobile asked Dr. McDonald to study consumer recognition of the magenta mark and whether it had acquired secondary meaning. Dr. McDonald designed and conducted a nationwide internet survey of consumers, between 16 and 65 years old, who are mobile-phone subscribers and who influence the choice over which mobile-phone service provider they use. The survey was structured as a double-blind experiment. The respondents were presented with a test stimulus — T-Mobile Magenta — and a control stimulus — brown— without any brand-identifying information. Each respondent was asked several questions to gauge whether that individual associated the color with' a company that offers wireless phone services and, if so, which company.

The test-stimulus survey had 296 respondents, 150 males and 146 females. When presented with T-Mobile magenta, 61% of the respondents answered “yes” when asked whether they associated the color with any company or companies that offer wireless or mobile phone services or plans. When asked whether they associated the color with only one company or with more than one company, 57% of the respondents answered that they associated the color with only one company, “a net of 55%” after adjusting for the control group.

The respondents were then asked to type in the name of the company that used the color. Forty-nine percent of the respondents accurately named T-Mobile, Two of the three respondents who initially answered that they could not name the company later stated that they remembered commercials featuring people wearing the magenta color. Dr. McDonald concluded that this was a T-Mobile association that warranted bringing the T-Mobile association up to 50%.

The survey included 236 individuals between 16 and 55, close to T-Mobile’s target age range of 18 to 49. (See DeLuea Decl. ¶ 8). When those respondents were isolated, 56% responded that they associated the Pantone Process Magenta color with T-Mobile. By focusing on the target age range, the survey avoided a problem that courts have identified. See Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir.1980) (finding a consumer survey deficient because, among other things, it “neglected completely defendants’ primary customers young, single, male college students.”).

With this information, Dr. McDonald concluded that T-Mobile’s use of Pantone Process Magenta had acquired a secondary meaning “among at least 50% of consumers aged 16-65 who both subscribe to mobile service and influence provider brand decisions.” When the “focus of the analysis [was] narrowed to exclude consumers above 55 (a group that is outside the primary target audience for T-Mobile advertising and promotion), the level of secondary meaning rises to at least 56%.” Dr. McDonald explained that “these figures represent the most conservative definition of secondary meaning, insofar as they reflect not merely a single source attribution, but actually, explicit T-Mobile brand attributions. The ability of nearly all who make a single source attribution to name T-Mobile as the source constitutes compelling evidence of secondary meaning, meeting a proof standard that extends beyond the strictest definition of the concept.”

Aio attacks this survey and its results on two grounds: the survey should not have been conducted over the internet; and the control stimulus was flawed. These arguments do not justify disregarding or discounting the survey.

“In assessing the validity of a survey, [the Fifth Circuit] look[s] to two factors: first, the manner of conducting the survey, including especially the adequacy of the universe; and second, the way in which the participants are questioned.” Scott Fetzer v. House of Vacuums Inc., 381 F.3d 477, 487 (5th Cir.2004). “In an infringement action, ‘the appropriate universe should include a fair sampling of those purchasers most likely to partake of the alleged infringer’s goods or services.’ ” Id. (citing Amstar, 615 F.2d at 264). Here, Aio does not take issue with Dr. McDonald’s survey universe. Aio does dispute how survey participants were questioned and the color chosen as the control stimulus.

Aio uses the reports of Dr. Berns, an expert on color perception, and Dr. Tarr, an expert in visual perception and cognition, to argue that the survey is flawed because it tested color perception through the internet. Aio argues that color perception cannot be validly tested on a computer screen because color settings may vary by computer and there is no way to know whether T-Mobile Pantone Process Magenta was what survey respondents saw when they answered the survey questions.

Dr. McDonald’s survey ended by presenting each respondent with three primary colors: red, green, and blue. The survey then required the respondent to confirm that the colors were red, green, and blue. That provided some assurance that the respondents were seeing the intended color, Pantone Process Magenta, when taking the survey. Even with this check, Aio argues that there may be variations among computers that make it unclear whether respondents were seeing Pantone Process Magenta or another magenta shade. This argument proves too much in one sense; color perception is not identical from person to person. And even if different computers and screens projected different magenta shades, the fact that the respondents consistently associated what they saw with T-Mobile confirms the strength of the association of T-Mobile with magenta. If anything, assuming some variation from screen to screen makes the association of bright pink magenta with T-Mobile even stronger. Using the internet to conduct the survey does not undercut its results.

Aio also attacks the survey’s use of brown as an implausible and unattractive control color for the wireless-services industry. Aio argues that brown connotes dependability and solidity rather than technological sophistication. The record does not support the argument that this choice of control color undermines the survey. T-Mobile points out that Boost Mobile uses a similar brown color as its signature source-identifier color. Aio’s internal documents reflecting its decision to use plum show that it considered butterscotch and gold, both in the brown color “family.” Interbrand specifically considered colors in the brown spectrum as opportunity areas. Aio has not explained why brown is so implausible and unattractive as a control-color choice as to make the survey results unreliable.

The court finds that Dr. McDonald’s methodology was sound and that her report provides reliable consumer-survey analysis. The report provides direct evidence of secondary meaning. “The only direct evidence probative of secondary meaning is consumer surveys and testimony by individual consumers.” Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 43 (1st Cir.2001). The fifth secondary-meaning factor weighs in favor of finding that T-Mobile’s magenta mark has acquired secondary meaning in the consumer-wireless-telecommunications market.

These five factors support and lead to the finding and conclusion that T-Mobile has demonstrated a substantial likelihood of success on its claim that its magenta mark has acquired secondary meaning. Aio’s arguments about the absence of clear evidence on the last two factors, direct-consumer testimony and intent to copy, do not alter that conclusion.

Aio- argues that the following factors weigh against finding secondary meaning: (1) T-Mobile failed to register its mark in the primary trademark register; (2) T-Mobile has been inconsistent in the shade of magenta it uses in advertisements and promotional material; (3) T-Mobile does not use the magenta color as a stand-alone mark; and (4) T-Mobile’s use of magenta is nonexclusive, both inside and outside the wireless-services industry. The court concludes that these arguments, considered both separately and together, do not undermine finding secondary meaning.

A. Registration on the Supplemental Register

Proof of trademark registration “constitutes prima facie evidence that the mark is valid and that the registrant has the exclusive right to use the registered mark in commerce with respect to the specified goods or services.” Amazing Spaces, 608 F.3d at 237 (citing Lanham Act §§ 7(b), 33(a); 15 U.S.C. §§ 1057(b), 1115(a); Elvis Presley Enters. v. Capece, 141 F.3d 188, 194 (5th Cir.1998)). T-Mobile registered the magenta mark on the Supplemental Register. Aio argues that such registration establishes the invalidity of the trademark right T-Mobile asserts. (Aio Response Brief at 15-16 (Docket Entry No. 76 at 26-27)). Aio relatedly argues that T-Mobile’s failure to object or appeal the placement of the magenta mark in the Supplemental Register concedes that the magenta mark lacks secondary meaning.

Neither the Fifth Circuit nor other circuit courts has closely examined the meaning of registration in the Supplemental Register. The case law does provide some guidance. While registration “on the principal register shows that the Commissioner has determined that the mark is distinetive[, registration on the supplemental register means that the Commissioner has determined that the mark is ‘capable of distinguishing.’ ” Cal. Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1454 (9th Cir.1985) (citing 15 U.S.C. § 1091 (1982); In re Simmons Co., 47 C.C.P.A. 968, 278 F.2d 517, 519 (1960)). Registration in the supplemental register requires showing “not whether the mark is already distinctive of the applicant’s goods, but whether it is capable of becoming so.” In re Bush Bros. & Co., 884 F.2d 569, 570 (Fed.Cir.1989) (citing Simmons, 278 F.2d at 519). “Thus a mark that is ineligible for registration on the Principal Register because it is merely descriptive of the goods or services may be registered on the Supplemental Register.” Id. (internal citations omitted); see also George & Co. v. Imagination Entm’t, Ltd., 575 F.3d 383, 391 n. 8 (4th Cir.2009) (citing 15 U.S.C. §§ 1057(b), 1094; E.T. Browne Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 202 (3d Cir.2008)). “[U]nlike principal registration, supplemental registration is not prima facie evidence of the validity of the registered mark, of ownership of the mark, or of the registrant’s exclusive right to use the registered mark in commerce.” George & Co., 575 F.3d at 391 n. 8. But “[if] the mark later acquires distinctiveness through use in commerce, the mark becomes eligible for registration on the Principal Register.” Bush Bros. & Co., 884 F.2d at 570 (citing 15 U.S.C. § 1052(f) (five years of substantially exclusive and continuous use as a mark may be prima facie evidence of secondary meaning)). While supplemental registration does not create a statutory presumption of validity, the mark may still become distinctive and legally protectable through its use in commerce.

While registration on the Principal Register provides prima facie evidence of protectability, Aio has not pointed to, and the court has not found, cases holding that failing to qualify for registration on the Principal Register proves, or provides prima facie proof of, unproteetability. See Cal. Cooler, 774 F.2d at 1454 (citing Clairol, Inc. v. Gillette Co., 389 F.2d 264, 269 n. 9 (2d Cir.1968) (“We do not mean to imply that failure to contest a Patent Office determination that a mark is registrable only on the supplemental register is a concession that the mark is not, as used, distinctive of the applicant’s goods.”)). A “mark need not be registered in order to obtain protection because ‘[o]wnership of trademarks is established by use, not by registration.’ ” Bd. of Supervisors, 550 F.3d at 475 (quoting Union Natl Bank of Tex., 909 F.2d at 842). “The key is whether the mark is ‘capable of distinguishing the applicant’s goods from those of others.’ ” Id. (quoting Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992)).

Aio cites In re Future Ads LLC, 103 U.S.P.Q.2d 1571, 1574 (T.T.A.B.2012), as support. In that review of an examining attorney’s refusal to register a trademark, the Trademark Trial and Appeal Board noted that it is “well settled as a legal matter that a mark owner’s acceptance of registration on the Supplemental Register constitutes an admission that the mark is descriptive at the time of registration.” Id. (emphasis added) (citing to another TTAB decision). T-Mobile introduced its magenta mark in the United States in 2002 and registered it in the Supplemental Register in 2007. (Docket Entry No. 19, Stitt Decl. ¶¶2-3, Exs. 2-3). Now, more than ten years after T-Mobile introduced its magenta mark in commerce and almost six years after its registration in the Supplemental Register — and after T-Mobile spent billions of dollars on marketing that emphasized Pantone Process Magenta as uniquely and ubiquitously associated with the company’s wireless telecommunications services — the landscape has surely changed. Aio’s argument is not a persuasive basis to discount the evidence showing secondary meaning or to alter the finding and conclusion that the magenta color has acquired secondary meaning.

B. Shades of Magenta

Aio argues that T-Mobile uses different shades of magenta in different promotional materials and that the use of different shades invalidates the claim that the magenta mark has acquired a secondary meaning. At the evidentiary hearing, Aio introduced a plastic T-Mobile coffee cup (Ex. 184), a metal water bottle (Ex. 185), a mouse pad (Ex. 186), a t-shirt (Ex. 190), and a lady’s sport shirt. The items were all clearly bright pink magenta, but the shades varied. Aio also pointed to internal T-Mobile documents that appeared to describe permissible shade variation or color range in T-Mobile marketing products and materials featuring the magenta color.

At the evidentiary hearing, DeLuca credibly testified that T-Mobile strives for consistency and uniformity in using Pantone Process Magenta in its marketing materials. He also credibly testified that some variation inevitably results from the different materials used in marketing. The color looks different when applied to a metal surface than to cloth or paper. Even with these variations, however, the color remains readily identifiable as a distinctive bold, bright magenta. This testimony is consistent with T-Mobile’s internal document outlining the amount of permissible shade variation. The document states that “[m]agenta is used consistently across all media to the extent this is technically feasible. The variances shown above are permitted.” (Aio Response Br. at 19). T-Mobile instructs its marketing-materials manufacturers and vendors to use Pantone Process Magenta. Despite efforts to have the identical shade, Pantone Process Magenta, appear every time, in every application, some variations are inevitable. The fact that T-Mobile executives have defined the degree of permissible variance is unsurprising and does not detract from the secondary meaning that T-Mobile magenta has acquired in the marketplace. Aio’s argument that T-Mobile not only tolerates, but encourages, the use of color variations is overstated.

Aio argues that T-Mobile’s allowance for a range of magenta shades precludes it from asserting protected trademark status, much less secondary meaning, in the color. T-Mobile has registered a specific color that it has been using as a brand identifier since 2002. T-Mobile seeks protection of that color. T-Mobile has produced ample evidence that it has developed a nationally recognized brand through consistent, extensive use of large monochromatic blocks or swaths of its signature bright-pink magenta color in its marketing and store appearance.

The Pantone system is a tool for identifying colors in a way that is clearly understood. See, e.g., McCarthy § 7:45.70 (“Some courts have used the Pantone system as a method of defining the limits of trademark protection of a color and giving the defendant an objective benchmark for complying with an injunction. Under this approach, a court could define the scope of a trademark in a color as, for example, ten numbered shades on each side of Pantone color number 165.”). Aio is correct that establishing a protectable right in a trademark based on or significantly featuring a color does not entitle the trademark holder to rights in a wide range of shades of that color. But that is not what T-Mobile is doing here, T-Mobile has consistently used the same shade of bright-pink magenta known as Pantone Process Magenta. The record shows modest variations in shades of magenta due to different advertising or promotional materials. The record also shows the use of variations in magenta shades as well as other colors as additions or accents to large blocks of Pantone Process Magenta. Neither puts T-Mobile in the position of seeking protection for such a wide range of magenta shades that it is entitled to no protection at all. And Aio’s argument does not detract from Dr. McDonald’s survey report, which provides direct evidence of secondary meaning in T-Mobile pink, Pantone Process Magenta.

Under Aio’s theory, T-Mobile would have to reject wholesale any product or merchandise that does not exactly match Pantone Process Magenta and ensure that it does not ever use any shade variation. Otherwise, T-Mobile would lose its ability to claim a protectable right in magenta as part of its trademark. T-Mobile would also have to provide an accounting for its use of Pantone Process Magenta as opposed to any variations of the color over the last ten years. (Aio Brief at 21 (“Because T-Mobile has used so many different shades of pink, and admittedly cannot break out its advertising expenditures for each of the many shades of pink it uses, T-Mobile’s evidence of advertising spent is entirely unpersuasive.” (citations and footnote omitted))). The case law does not support Aio’s underlying assumption that once T-Mobile identifies and pursues protection of a particular Pantone color, that color cannot be protected or acquire secondary meaning unless every appearance and use conforms exactly to that color. In Louboutin, the Second Circuit noted that the defendant’s chief executive officer recognized “the notoriety of the distinctive signature constituted by the red sole of LOUBOUTIN models in contrast with the general presentation of the model, particular its upper, and so for all shades of red,” 696 F.3d at 206. The Second Circuit concluded that by “placing the color red ‘in [a] context [that] seems unusual,’ Qualitex, 514 U.S. at 162, 115 S.Ct. 1300, and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand which, to those in the know, instantly denotes his shoes’ source.” Id. (some quotation marks omitted). Similarly, T-Mobile’s use of bright-pink magenta as an identifying col- or in the wireless-telecommunications industry was unusual. T-Mobile has tied bright-pink magenta to its products and services by investing billions of dollars in a decade-long marketing campaign. The survey evidence shows that consumers associate magenta with one brand in the industry; more than a majority of T-Mobile’s target audience associate it with T-Mobile. Aio has not cited persuasive or binding authority that some tolerated color variance precludes secondary meaning. See also SLB Toys. USA Inc. v. Wham-O Inc., et al., CV 06-1382 (RSWL) (C.D.Ca. Dec. 5, 2007) (enjoining “th