Second Circuit Upholds Breitling’s Use of ‘Red Gold’ in Trademark Dispute

Takeaway: The Second Circuit upheld a ruling in favor of Breitling USA Inc. in a trademark dispute with Solid 21 Inc., determining that Breitling’s use of the term “red gold” was descriptive, emphasizing historical industry context and consistent usage by Breitling.

In a recent decision, a split Second Circuit panel upheld a Connecticut federal judge’s ruling in favor of Breitling USA Inc. in a trademark dispute with Solid 21 Inc. The case centered on Breitling’s use of the term “red gold” to describe the color of its products. The court determined that Breitling used the phrase in a descriptive manner and in good faith, rather than as a trademark.

The panel, led by U.S. Circuit Judge Richard C. Wesley, emphasized the historical context of the term “red gold” in the jewelry industry, dating back to the mid-1800s. It pointed out that Breitling consistently used the term to describe the materials used in its watches, particularly gold with red or pink hues, and not as a source identifier.

The court rejected Solid 21’s arguments, including its claim that “red gold” was not a generic term and its assertion that Breitling used the term to target specific consumer demographics. The majority opinion, authored by Judge Wesley, emphasized that Breitling’s use of “red gold” was purely descriptive and accompanied by other materials in its advertising, such as stainless steel and titanium.

“Red Gold” as an asserted trademark is very familiar to our firm, as Cislo & Thomas’ Managing Partner Daniel M. Cislo, Esq. has been a trademark expert in two different cases regarding these accusations:

– Solid 21, Inc. v. Richemont North America, Inc. et al.; Case No. 1:19-cv-01262-LGS (Trademark Litigation – Represented Defendant), and

– Solid 21, Inc. v. Ulysse Nardin, Inc.; Case No. 19-80474-Civ-Middlebrooks/Brannon (Trademark Litigation – Represented Defendant).