Blue Bottle Coffee, LLC v. Liao

Background

Blue Bottle Coffee, LLC owns registered trademarks for Pantone 2995 C, a shade of blue, used with specified coffee products and services. It also owns other word and design trademarks and claims trade dress protection for aspects of its product packaging. Blue Bottle sued Hui Chuan Liao and Southern Technologies, LLC, alleging trademark infringement and other claims based in part on defendants’ use of the name “Blue Brew,” the word “blue,” and a shade of blue that Blue Bottle alleged was identical or nearly identical to its blue marks.

Blue Bottle disclosed Jill Morton as an expert witness. Morton described herself as a color consultant and had degrees in art education and design, more than 20 years of experience as a brand-identity expert, and experience teaching about color. Her report addressed three subjects: whether Blue Bottle’s blue was a source-identifying feature of its brand; whether defendants’ blue was similar or nearly identical to Blue Bottle’s blue; and whether the combined use of the similar blue and the word “blue” would likely confuse consumers.

Defendants moved to exclude Morton’s testimony under Federal Rule of Evidence 702 and related evidence rules. They argued that her testimony was not helpful, lacked sufficient factual support, used unreliable methods, exceeded her qualifications, was irrelevant, and risked unfair prejudice.

Legal standard

Rule 702 permits expert testimony when the expert’s specialized knowledge will help the jury, the opinion rests on sufficient facts or data, reliable principles and methods support it, and the expert reliably applied those principles and methods. The court acts as a gatekeeper by assessing the testimony’s reliability and relevance. The party offering the expert testimony bears the burden of showing that it is admissible. Relevant evidence may still be excluded if its value is substantially outweighed by the danger of unfair prejudice, confusion, or misleading the jury.

Court’s analysis

Morton’s opinion that Blue Bottle’s blue identifies its brand

The court found Morton qualified to testify about Blue Bottle’s use of blue as a source identifier. Her education, experience advising brands about color and branding, and teaching experience provided a sufficient basis for this opinion. The court said that defendants’ criticisms—including that Morton lacked a psychology or science degree, had not published peer-reviewed papers, had not conducted a consumer survey, and had not interviewed Blue Bottle employees—went mainly to the weight and credibility of her testimony rather than its admissibility.

The court also found this testimony relevant because a jury would need to evaluate whether Blue Bottle’s blue marks had acquired “secondary meaning,” meaning that consumers primarily understood the color as identifying the source of the products rather than describing the products themselves.

Morton’s comparison of the parties’ blue colors

The court allowed Morton to testify about the similarity of the colors. Morton compared Pantone 2995 C, Blue Bottle’s color, with Pantone 305 C, defendants’ color, and also discussed their color formulas using the CMYK printing system. The court concluded that her 20 years of experience with these techniques provided a sufficient basis for her analysis, even though defendants argued that her CMYK method had not been peer reviewed or previously accepted.

The court found the testimony relevant because color similarity can bear on the likelihood-of-confusion inquiry in a trademark case. Although jurors could compare the colors themselves, the court concluded that a professional color consultant could provide a useful framework concerning Pantone, color ingredients, and how the formulas may relate to perceived similarity. The court stated that any weaknesses in the analysis could be addressed through cross-examination and contrary evidence.

Morton’s opinion about likely consumer confusion

The court excluded Morton’s statement that defendants’ products were likely to mislead consumers or cause them to believe that the products came from Blue Bottle or were associated with Blue Bottle. Morton relied on Blue Bottle’s longstanding use of its blue marks, the similarity of the colors, and defendants’ use of the word “blue.”

The court found that Morton had no apparent experience analyzing consumer confusion from a legal or marketing perspective and that her conclusion was essentially based on a side-by-side comparison of the marks. Because the parties’ products were allegedly encountered through websites and third-party storefronts, the court found no support for treating a side-by-side comparison as a reliable test of consumer confusion. It also concluded that the opinion would not assist the jury and would improperly take over the jury’s role as factfinder. The court noted that an expert may address facts relevant to an ultimate issue, but may not give an opinion that amounts to a legal conclusion or otherwise replace the jury’s decision.

Disposition

The court granted defendants’ motion to exclude Morton’s testimony insofar as it concerned her opinion that there was a likelihood of confusion between Blue Bottle’s and defendants’ products. The court denied the motion in all other respects, leaving Morton permitted to testify about the source-identifying nature of Blue Bottle’s blue and the similarity of the parties’ blue colors.