Deere & Company v. FIMCO Inc.

Filing 369

FINDINGS OF FACT AND CONCLUSIONS OF LAW by Senior Judge Thomas B. Russell on 10/13/2017. The Court finds in favor of Deere & Company and against FIMCO. Permanent injunction issued against FIMCO, Inc. Within sixty (60) days of the issuance of th is Memorandum Opinion, FIMCO is directed to file with the Court and serve on Deere a report, in writing, detailing the manner and form in which FIMCO has and will comply with the injunction. Deere shall, within fourteen (14) days of the issuance of this Memorandum Opinion, file any motion for costs and attorneys' fees. The Court will enter an Order and Judgment consistent with the Findings of Fact and Conclusions of Law set out in this Memorandum Opinion. cc: Counsel (CDR)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF KENTUCKY
PADUCAH DIVISION
CASE NO. 5:15-CV-105-TBR
DEERE & COMPANY,

PLAINTIFF/COUNTER-DEFENDANT

v.
FIMCO INC., d/b/a/ SCHABEN
INDUSTRIES,

DEFENDANT/COUNTER-CLAIMANT

FINDINGS OF FACT AND CONCLUSIONS OF LAW
I. INTRODUCTION
Plaintiff, Deere & Company (“Deere”), brings this action alleging that Defendant,
FIMCO, Inc. (“FIMCO”), is acting in violation of federal trademark and common law by
producing and distributing trailed agricultural sprayers and applicators bearing green and yellow
colors that are indistinguishable from the green and yellow colors Deere uses on its agricultural
equipment.1 Specifically, Deere asserts that FIMCO’s actions constitute (1) federal trademark
infringement in violation of 15 U.S.C. § 1114, (2) federal false designation of origin and unfair
competition in violation of 15 U.S.C. § 1125(a), (3) federal trademark dilution in violation of 15
U.S.C. § 1125(c), and 4) common law trademark infringement in violation of the laws of
Kentucky. [DN 1 at 6–9 (Complaint).] Deere seeks a permanent injunction prohibiting FIMCO
from “using the Deere Colors trademark in connection with its sprayers and wheeled agricultural
equipment, as well as an injunction ordering [FIMCO] to cease using yellow tanks or wheels in
connection with wheeled agricultural equipment having green vehicle bodies.” [Id. at 1–2.]

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  The parties have stipulated to the facts that the green and yellow paint colors used by Deere and FIMCO are
“indistinguishable from each other to the naked eye” and “indistinguishable from each other when appearing on
equipment in the field.” [DN 164 at 1–2 (Stipulated Facts).]

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This Court conducted a five-day bench trial in which it heard testimony from several
Deere employees, including Brian Myers, Manager of the Business Partnerships, Crop Care
Platform; Doug Felter, Product Marketing Manager of the Application Equipment department;
Neil Dahlstrom, Manager of Corporate Archives and History; and Aaron Wetzel, Vice President
of the Global Crop Care Platform at Deere. Deere also called as witnesses Hal Poret, a survey
expert; Greg Thompson, Sales Lead at Heritage Tractor in Lawrence, Texas; and Clay Roll,
General Manager of FAST Manufacturing, Inc. in Windom, Minnesota.
On behalf of FIMCO, the Court heard testimony from Shannon Persoma, paralegal at the
law firm of Koley Jessen in Omaha, Nebraska; Kevin Vaughan, Owner and CEO of FIMCO;
Albert Kessler, Manager for the Sprayer Systems and Precision Equipment departments of
Stutsman, Inc. in Hills, Iowa; Mark Schwarz, Acting Store Manager for FIMCO’s company store
in Columbus, Nebraska; Todd Yeazel, National Sales Manager for Fertilizer Dealer; Cindy
Perkins, Co-Owner of Perkins Sales, Inc. in Bernie, Missouri, and Dave Wipson, President and
COO of FIMCO.
Additionally, both parties submitted designated deposition testimony, counterdesignations, and objections. [DN 220 (Deere’s Amended Submission of Deposition
Designations, Counter-Designations, and Objections); DN 221 (FIMCO’s Submission of
Deposition Designations, Counter-Designations, and Objections).] Deere designated the
deposition testimony of Robert Conley, a retired FIMCO employee; Rob Goltz, FIMCO’s
National Account Manager; Mark Schwarz; Kevin Vaughan; and Dave Wipson. [DN 220.]
FIMCO designated deposition testimony of Neil Dahlstrom; Lant Elrod, Manager of Creative
Services for the Agriculture and Turf Divisions at Deere; Doug Felter; Brian Myers; and Barry
Nelson, Manager of Media Relations at Deere. [DN 221.]

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Following the bench trial, the parties filed post-trial proposed findings of fact and
conclusions of law. [DN 337; DN 338.] Pursuant to Federal Rule of Civil Procedure 52, the
Court will now make its findings of fact and conclusions of law. For the reasons explained in this
opinion, the Court concludes that FIMCO’s use of green and yellow on trailed agricultural
sprayers and applicators infringes on and dilutes Deere’s trademarks in violation of 15 U.S.C. §
1114, § 1125(a), § 1125(c), and Kentucky common law. The Court also finds that FIMCO failed
to prove the elements of its affirmative defenses of acquiescence and estoppel. Based on these
findings, the Court will issue a permanent injunction prohibiting FIMCO’s future use of the
green and yellow color combination.
II. STANDARD
Rule 52 of the Federal Rules of Civil Procedure requires that, “[i]n an action tried on the
facts without a jury . . . the court must find the facts specially and state its conclusions of law
separately.” Fed. R. Civ. P. 52(a)(1). “The findings and conclusions . . . may appear in an
opinion or a memorandum of decision filed by the court.”

Fed. R. Civ. P. 52(a)(1). “In

considering a district court’s decision following a bench trial,” this Court’s findings of fact are
reviewed “under the clearly erroneous standard. Conclusions of law, on the other hand, are
reviewed de novo.” Overton Distributors, Inc. v. Heritage Bank, 340 F.3d 361, 366 (6th Cir.
2003) (quoting Burzynski v. Cohen, 264 F.3d 611, 616 (6th Cir. 2001)).
III. EVIDENTIARY DETERMINATIONS
Numerous evidentiary determinations remain to be ruled on in this case. The Court will
address all objected-to exhibits, testimony, and deposition designations on which it relies in
making its findings of fact and conclusions of law set out herein. For those exhibits on which the
Court does not rely, however, the Court will not address the parties’ objections thereto.

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IV. FINDINGS OF FACT
A. The Parties
1. Deere is organized under the laws of Delaware, with its principal place of business located at
One John Deere Place, Moline, Illinois 61265.
2. FIMCO is organized under the laws of Iowa, with its principal place of business located at
800 Stevens Port Drive, Suite DD836, Dakota Dunes, South Dakota 57049. FIMCO is
registered to do business in the State of Kentucky and has a registered agent for service in
Kentucky. FIMCO also has a storefront location at 3303 Pembroke Road, Hopkinsville,
Kentucky 42240.
B. The Parties’ Brands
(1) Deere
3. Deere was founded in 1837. Today, it is a multi-billion dollar company and does business
worldwide. In 2016, for example, Deere had over $26 billion in global sales. [Tr. Vol. 1B at
14 (Doug Felter Testimony).]
4. For more than 100 years, Deere has sold a wide variety of agricultural, forestry, lawn, and
garden equipment. Deere is what is known as a “long line” or “full line” company, meaning
it “offers all or very nearly all of the equipment that a farmer would need to carry out a
complete cropping cycle from tillage to planting to spraying and on to harvest.” [Id. at 20–
21.]
5. In addition to Deere, other “long line” or “full line” companies include Case New Holland
Global, which operates both Case IH and New Holland, and AgCo. [See id. at 20; Tr. Vol.
1A at 45–46 (Brian Myers Testimony); Tr. Vol. 5B at 39 (Dave Wipson Testimony).]

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6. Deere sells its products in the United States only through authorized independent dealerships.
[Tr. Vol. 1B at 14 (Felter Testimony).] Deere sells its equipment to its dealers which, in turn,
sell it to end-users. Deere has slightly over 1,300 dealer locations in the United States. [Id. at
16.] Forty-nine out of fifty states in the U.S. have dealerships that sell Deere equipment. [Id.]
7. Deere is the leading seller of agricultural tractors in the United States, accounting for
approximately fifty to sixty percent of large agricultural tractors sold today. [Id. at 27.]
8. Nearly all of Deere’s agricultural equipment is painted using green and yellow colors. [Tr.
Vol. 1A at 31 (Myers Testimony); Tr. Vol. 1B at 8 (Felter Testimony).] The only agricultural
equipment that Deere does not paint green and yellow is that purchased by entities such as
government agencies or municipalities which desire to purchase their equipment painted
bright orange for increased visibility. [Tr. Vol. 1A at 31 (Myers Testimony); Tr. Vol. 1B at 8
(Felter Testimony).]
9. Deere is the only manufacturer of green and yellow tractors in the United States. [Tr. Vol. 5B
at 101–102 (Wipson Testimony).]
(2) FIMCO
10. FIMCO was incorporated on January 10, 1966. [Tr. Vol. 3A at 54 (Kevin Vaughan
Testimony); DX-168 (FIMCO Articles of Incorporation).]
11. FIMCO’s Articles of Incorporation list the names, addresses, and signatures of five
incorporators. [See DX-168 at 3.] One incorporator, Tom Vaughan, was the father of the
current CEO and sole owner of FIMCO, Kevin Vaughan.
12. Kevin Vaughan was born on November 25, 1960. [Tr. Vol. 3A at 32 (Vaughan Testimony).]

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13. Vaughan, now FIMCO’s CEO and sole shareholder, testified that he began to receive stock
in FIMCO from his father when he was in high school and ultimately became the sole
shareholder in 2002. [Id. at 38–42.]
14. Today, FIMCO has two divisions within the company. [Tr. Vol. 5B at 40–41 (Wipson
Testimony).] The first is its lawn and garden division, which currently uses the “FIMCO”
brand. [Id. at 41.] FIMCO’s FIMCO-branded lawn and garden equipment is typically painted
white, red, and black. [Id.] In this division, FIMCO sells primarily fifteen to forty gallon
lawn and garden sprayers. [Id. at 41–42.] FIMCO also sells attachments for lawn and garden
tractors, including, for example, carts, aerators, and spikers. [Id. at 42.] Wipson estimated
that FIMCO makes up nearly 80% of the market share for lawn and garden equipment in the
U.S. [Id.]
15. FIMCO’s second division is its agricultural division, which currently uses the “Ag Spray”
brand. [Id. at 41–43.] FIMCO’s Ag Spray division is made up of equipment that it primarily
painted green and yellow. [Id. at 43.] Through its Ag Spray division, FIMCO sells such
products as large agricultural implements, including trailed agricultural sprayers and liquid
nutrient applicators. [Id.] Generally, this equipment features between 1,000 to 2,000 gallon
tanks, and are “designed to go in a field, row crop, towed behind a decent-sized tractor.” [Id.]
Other Ag Spray-branded products include smaller sprayers, three-point hitch-mounted
sprayers, utility task vehicle (UTV) sprayers, spot sprayers, and fluid-handling equipment.
[Id. at 43–44.] In addition, FIMCO is “the largest parts supplier in the country for all the
various major brands of companies.” [Id. at 44.]
16. FIMCO’s sales of its large agricultural sprayers and applicators, which are the subject of this
litigation, currently make up about 4% of FIMCO’s overall revenue. [Id. at 46.] Wipson

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testified that a few years ago, sales of large agricultural sprayers and applicators made up
approximately 10% of FIMCO’s total revenue, which was the highest it had ever been. [Id.]
Wipson further testified that “the majority of [FIMCO’s] customers are not large ag
customers. We have a lot of customers that just buy tanks or just buy parts or just buy pumps
or they buy our spot sprayers. That is the majority of our customers. We don’t have a large
customer base that buys all this big green steel that’s” the subject of this litigation. [Id. at
109.]
17. Before FIMCO began solely using the Ag Spray brand for equipment in its agricultural
division, which started around 2013, FIMCO also sold its agricultural equipment under other
brands, one of which was called Schaben. [Id. at 48–49; 94–95.] FIMCO acquired the
Schaben brand in 1998. [Tr. Vol. 3B at 81 (Vaughan Testimony).] FIMCO began phasing out
the Schaben brand around 2013 to consolidate its brands under the Ag Spray name, [Tr. Vol.
5B at 48–29 (Wipson Testimony)], however, used Schaben equipment remains in the
marketplace today.
18. While Deere sells its equipment only through authorized dealers, who then sell to end users,
[Tr. Vol. 1B at 14 (Felter Testimony)], FIMCO does sell equipment directly to end users. [Tr.
Vol. 5B at 51–52 (Wipson Testimony).] FIMCO sells its equipment through trade shows,
magazines, radio advertising, traveling salesmen, its website, and at its ten physical locations.
[Id. at 52.] However, FIMCO also sells its equipment to distributors, who sell the products to
dealers, who then sell to end users. [Id. at 63.]
19. FIMCO sells trailed agricultural sprayers and applicators, which both require a tractor to
operate. FIMCO often advertises its sprayers and applicators in pictures attached to Deere

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tractors. [See Tr. Vol. 5B at 102–104 (Wipson Testimony); PX-30; PX-31; PX-218 at 4; PX221 at 4.]
20. Twenty-four authorized John Deere dealers also sell FIMCO’s trailed agricultural equipment.
[See Tr. Vol. 1B at 17–18 (Felter Testimony) (identifying dealerships); Tr. Vol. 5B at 113–16
(Wipson Testimony) (identifying dealerships).]
21. Today, depending on the economy, FIMCO employs between 300 and 800 people. [Tr. Vol.
3A at 32 (Vaughan Testimony).]
22. Vaughan testified that he started helping his father out at FIMCO when he was about eight
years old. [Tr. Vol. 3A at 35 (Vaughan Testimony).] Vaughan testified that, at that time,
“[w]e were in the oil business.” [Id.]
23. Vaughan further testified that, throughout the 1960’s and 1970’s, he observed FIMCO sell
equipment the majority of which was green and yellow. [Id. at 36.] However, the Court will
address below whether it finds that FIMCO proved this to be true by a preponderance of the
evidence.2
24. FIMCO is what is known as a “short line” company, meaning it does not sell every piece of
equipment that would be necessary for a farmer to complete a full cropping cycle. [Tr. Vol.
1B at 21–22 (Felter Testimony).] Rather, short line companies “offer[ ] a smaller range of
agricultural equipment. Typically, it’s only trailed equipment, and it’s usually focused on just
a few specific product categories.” [Tr. Vol. 1A at 46 (Myers Testimony).]

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The Court notes that Deere objected to numerous portions of Vaughan’s testimony due to a lack of foundation and
lack of personal knowledge. [See, e.g., Tr. Vol. 3A at 42, 44, 68; Tr. Vol. 3B at 9, 19, 44–45, 105.] Though the
Court does cite several portions of Vaughan’s trial testimony, the Court notes that it only considered this testimony
to the extent the Court found it to be supported by proper knowledge and foundation and to the extent it has
probative value.

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C. The Marks at Issue
25. The dispute in this case centers on FIMCO’s use of a green and yellow color combination on
its trailed agricultural sprayers and liquid nutrient applicators.
26. Deere uses green and yellow on numerous types of agricultural equipment, including
agricultural tractors, self-propelled sprayers and trailed nutrient applicators.
27. FIMCO uses green and yellow on trailed sprayers and trailed liquid nutrient applicators.
28. Generally speaking, agricultural sprayers and agricultural applicators are “both [ ] used to
apply some type of material – liquid, gas, solid, like a fertilizer – to crops.” [Tr. Vol. 5A at
36 (Kessler Testimony); Tr. Vol. 5A at 73–74 (Schwarz Testimony).]
29. Both Deere and FIMCO market their sprayers and applicators to farmers and farming
operations. [Tr. Vol. 1A at 47 (Myers Testimony).]
D. Deere’s Use of Green and Yellow Throughout Its History
30. As the Court will discuss in greater detail below in making its conclusions of law, among the
factors relevant in this case are the extent to which Deere has marketed, advertised, and sold
products bearing its trademarks and the extent to which the public recognizes Deere’s
trademarks. Accordingly, the Court will now make findings of fact as to those factors.
(1) Marketing and Advertising
31. For decades, Deere has marketed and advertised its green and yellow equipment extensively
in the United States. In 1904, Deere spent $33,683.77 on advertising, which represented a
little over 1% of its total expenditures for the year. [PX-35; Tr. Vol. 1B at 76 (Dahlstrom
Testimony).] By 1957, these numbers rose to $5,381,026 and 1.4%, respectively. [PX-37; Tr.
Vol. 1B at 79 (Dahlstrom Testimony).] And by 1966, these numbers were $10,964,785 and
about 1%. [PX-683; T. Vol. 1B at 79–80 (Dahlstrom Testimony).]

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32. The vast majority of Deere’s advertising throughout the years has featured and/or mentioned
its use of green and yellow on Deere tractors and other Deere agricultural equipment. [See,
e.g., PX-50 (1921 advertising brochure featuring John Deere stag plows colored in green and
yellow); PX-52 (1940 John Deere annual product catalog featuring a green and yellow Deere
tractor pulling a green and yellow Deere combine); PX-131 (1954 advertisement in the
Agricultural Institute Review for a toy tractor discussing “the green and yellow of John
Deere tractors”); PX-62 (1966 John Deere annual product catalog featuring a green and
yellow tractor with green bodies, yellow wheels, and yellow accents); PX-76 (1971 John
Deere advertising brochure showing a green and yellow Deere tractor pulling a green and
yellow Deere sprayer with a yellow tank); PX-85 (1980 advertising brochure showing a
green and yellow sprayer); PX-71 (1986 John Deere annual product catalog showing a green
and yellow Deere tractor pulling a green and yellow Deere hay baler); PX-104 (1999
advertising brochure featuring green and yellow Deere tractors and green and yellow
sprayers with yellow tanks); PX-114 (2007 advertising brochure for green and yellow Deere
sprayers); see also Tr. Vol. 1B at 82–102 (Dahlstrom Testimony).]
33. Today, Deere advertises using numerous forms of media, including print, digital, radio, and
television. [Tr. Vol. 1B at 9 (Felter Testimony).] Deere also displays its brand at farm and
trade shows, at which its dealers distribute information with which to market Deere
equipment. [Id.]
34. In 2016, Deere spent roughly $80 million on advertising its agricultural equipment, a
substantial portion of which was spent in the United States. [Id. at 13.]

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(2) Amount and Geographic Extent of Sales
35. Since its early years, Deere’s sales in the United States have been substantial. [See, e.g., PX146 (1950 Comptroller’s Report showing total U.S. sales of $296,355,729); PX-683 (1966
Comptroller’s Report discussing yearly sales of more than $1 billion, though not identifying
how much of that was in the U.S).]
(3) Actual Recognition by the General Consuming Public
36. Deere’s use of green and yellow on its tractors and other agricultural equipment over the
years has also been recognized in multiple third party publications such as newspapers,
magazines, and books.
37. Before approximately 1964, however, nearly all of this recognition was in the form of
regional and trade publications, and Deere’s archivist, Dahlstrom, stated that he did not
“know the circulation individually of th[o]se papers.” [Tr. Vol. 1B at 112 (Dahlstrom
Testimony).] Rather, Dahlstrom testified that those newspapers “would have been in general
circulation in the towns that they were printed in.” [Id. at 115 (emphasis added).]3 See, e.g.,
PX-641 (1930 article from the Greensburg Daily News in Greensburg, Indiana referring to
the “John Deere Colors (Green and Yellow)”); PX-715 (1939 article from the Coshocton
Tribune in Coshocton, Ohio);4 PX-642 (1947 article from the Advocate Messenger in
Danville, Kentucky referring to “the John Deere colors of yellow and green”); PX-648 (1950
article from the Hutchinson News Herald in Hutchinson, Kansas stating that a John Deere

3

 At trial, FIMCO objected to Deere questioning Dahlstrom, Deere’s archivist, about his expert opinion relating to
when Deere’s use of green and yellow colors came to be well known by the general public in the United States. [See
Tr. Vol. 1B at 103–109.] The Court agrees with FIMCO that Dahlstrom was not qualified to offer the opinion that
the Deere colors have been well known since the early 20th century. As such, the Court only relied on Dahlstrom’s
testimony to the extent he explained the many historical materials introduced at trial.  
4
  FIMCO also objected to the admission of PX-715 on the grounds that it was not timely produced by Deere.
Because the Court can discern no prejudice on behalf of FIMCO resulting from the admission of this exhibit, and
because the Court has permitted FIMCO to introduce certain documents that were produced very late in this
litigation, the Court overrules this objection.  

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exhibit at the county fair “will be in the company’s green and yellow colors”); PX-650 (1951
article from the Pella Chronicle in Pella, Iowa referring to John Deere Day as “The Day of
the Green & Yellow”);5 PX-653 (article from the Iola Register in Iola, Kansas); PX-660
(1954 article from the Cedar Rapids Gazette in Cedar Rapids, Iowa discussing a toy “John
Deere tractor in bright green and bright yellow”); PX-666 (1963 article from the Des Moines
Register in Des Moines, Iowa referring to “The familiar green and yellow Deere tractors and
other farm equipment”).] In 1963, in celebration of Deere’s 125th anniversary, the State of
Illinois, issued all license plates in Deere’s “green and yellow colors.” [PX-663; PX-664;
PX-665; PX-667 at 4.]
38. Deere also points to a 1950 novel by Elswyth Thane, The Reluctant Farmer, in which she
twice referred to John Deere, first as “the bright John Deere green and yellow” and second as
“the usual bright John Deere green and yellow.” [PX-148.] Again, however, though Thane
may have been “a well-known author in her day,” [DN 337 at 26], Deere did not present any
evidence regarding the circulation or volume of sales of Thane’s novel.
39. Beginning in 1964, however, Deere and its use of green and yellow began to be featured in
national publications. In 1964, a piece of green and yellow Deere agricultural equipment was
featured on the cover of Forbes. [PX-670.] In 1966, Deere’s then-CEO, William A. Hewitt,
was featured on the cover of Forbes along with a piece of green and yellow Deere equipment
behind him. [PX-672.] The 1966 Forbes article stated that “Deere cares a great deal about

5

  FIMCO objected to the admission of PX-641 and PX-650 on grounds of Rule 401, Rule 403, hearsay, and
foundation. [DN 282 at 28.] The Court will overrule these objections, however. The Court finds these publications to
be relevant and probative to show various instances of recognition of John Deere’s use of green and yellow during
various time periods. Moreover, the Court does not find that these publications contain hearsay because the Court is
not relying on them for the truth of the statements contained therein, but rather simply as evidence that the
statements were, in fact, printed at those times. However, even if these publications did contain hearsay, they fall
within the ancient documents exception codified in Federal Rule of Evidence 803(16), which provides a hearsay
exception for “[a] statement in a document that is at least 20 years old and whose authenticity is established.” Fed.
R. Evid. 803(16).

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any piece of equipment that bears the green and yellow Deere colors and the Deere prancing
stag symbol.” [PX-672 at 3.] Also in 1966, Fortune featured a photo of a Deere tractor being
used in a testing exercise and, in an accompanying article, wrote, “In the vanguard of the
columns of ever more sophisticated machines will be green-and-yellow mechanical giants.”
[PX-673.] In 1968, Deere was mentioned in Businessweek’s article about a Deere competitor,
Massey-Ferguson, in which Massey-Ferguson’s vice-president for farm machinery was
quoted stating that “The dominance of John Deere is awesome . . . Why, they’re so strong in
Illinois that even the state license plates were green and yellow [the Deere colors] one year.”
[PX-674 (alterations in original).] Because these publications were circulated nationally, the
Court finds that they are entitled to more weight in the determination of when Deere’s use of
green and yellow likely gained “actual recognition.”
E. Deere’s Registered Trademarks for Green and Yellow Colors
40. Deere has three trademarks registered with the United States Patent and Trademark Office
(“PTO”) involving its green and yellow color scheme. [Tr. Vol. 1A at 32–35 (Myers
Testimony); PX-1, PX-2, PX-3.]
41. The first registered trademark, Registration Number 1,502,103 (the “ ‘103 Registration”),
was registered on August 30, 1988. The ‘103 Registration covers “agricultural tractors, lawn
and garden tractors, trailers, wagons, and carts.” The ‘103 Registration identifies the date of
first use of the claimed mark in commerce as December 31, 1918. The ‘103 Registration
indicates that the mark includes a bright green body or frame of the agricultural vehicle and
bright yellow wheels. [See PX-1.]
42. The second registered trademark, Registration Number 1,503,576 (the “ ‘576 Registration”),
was registered on September 13, 1988. The ‘576 Registration covers “wheeled agricultural,

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lawn and garden, and material handling machines, namely, tillage machines, haying
machines, harvesting machines, mowers, cutters, shredders, sprayers, loaders, spreaders,
planting machines, and snow removal machines.” The ‘576 Registration identifies the date of
first use of the claimed mark in commerce as December 31, 1905. The ‘576 Registration
indicates that the mark includes a bright green color on the body and frame of the machine
and bright yellow wheels. [See PX-2.] Myers testified that, in his experience, “wheeled
agricultural equipment” includes both trailed and self-propelled machines. [See Tr. Vol. 1A
at 33–34 (Myers Testimony).]
43. The third registered trademark, Registration Number 3,857,095 (the “ ‘095 Registration”),
was registered on October 5, 2010. The ‘095 Registration covers “tractor-towed agricultural
implements, namely, balers, mower-conditioners, disk mowers, flail choppers . . . nutrient
applicators, [and] planters and seeding machines.” The ‘095 Registration identifies the date
of first use of the claimed mark in commerce as December 31, 1905. The ‘095 Registration
indicates that it “consists of the color combination green and yellow in which green is
applied to an exterior surface of the machine and yellow is applied to the wheels.” [See PX3.]
44. At trial, Deere also entered into evidence three “Section 15 Affidavits” it filed with the PTO
verifying that the ‘103, ‘576, and ‘095 Registrations were all used in commerce for five
consecutive years following their date of registration in connection with all of the goods
listed in the Registrations (except loaders) and that they were still used in commerce at the
time of the filing of the Affidavits. [See PX-150; PX-151; PX-152.] Deere filed Section 15

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affidavits for its ‘103 and ‘576 Registrations in October 1996 and for its ‘095 Registration in
April 2016. [See PX-150; PX-151; PX-152.]6
45. Deere presented evidence at trial, both through Myers’ testimony and through exhibits, to
support findings that it has, as it averred in its Section 15 Affidavits, used green and yellow
on “a wide variety of Deere-branded wheeled agricultural equipment.” [See Tr. Vol. 1A at
35–42 (Myers Testimony); PX-6–8; PX-238; PX-239; PX-241; PX-243;7 PX-250–69; PX275–79; PX-283; PX-285; PX-286, PX-288; PX-290–92; PX-296; PX-296.] This evidence
includes a liquid nutrient applicator, [PX-6], another type of nutrient applicator called a strip
till machine, [PX-8; PX-243], a dry fertilizer nutrient applicator, [PX-238], self-propelled
sprayers, [PX-7; PX-252], and a trailed spreader [PX-279], trailed planters, [PX-295].
Certain of the nutrient applicators, such as one of the strip till machines, were sold in the U.S.
in 2008 or 2009. [PX-243; Tr. Vol. 1A at 20 (Myers Testimony).] FIMCO did not challenge
the exhibits or cross-examine Myers on these topics. Finding this evidence credible, and
without evidence to the contrary, the Court finds that Deere indeed used its green and yellow
color scheme in commerce on wheeled agricultural sprayers and trailed nutrient applicators
for at least 5 consecutive years as set out in its Section 15 Affidavits.
F. Deere’s Use of Green and Yellow on Sprayers and Applicators
46. Deere uses a green and yellow color scheme on its trailed nutrient applicators and its selfpropelled agricultural sprayers. Specifically, the color scheme utilizes a green frame, yellow
wheels, and yellow tanks.

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 FIMCO objected to the admission of PX-150, PX-151, and PX-152 on hearsay grounds. [DN 282 at 10.] However,
the Court admitted these exhibits at trial over FIMCO’s objection. [Tr. Vol. 1A at 34–35.]   
7
 Though FIMCO initially objected to the admission of PX-243 on grounds of foundation as to date, [DN 282 at 11],
FIMCO did not object to its admission at trial. [Tr. Vol. 1A at 35–27 (Myers Testimony).] Accordingly, the Court
considers FIMCO’s objection to PX-243 withdrawn.    

15

47. Trailed nutrient applicators require a tractor to operate, while self-propelled sprayers have
their own engine, transmission, and steering wheel and do not use a tractor to operate. [Tr.
Vol. 1A at 86 (Myers Testimony).]
48. The following photograph is an example of a John Deere trailed nutrient applicator attached
to a John Deere tractor. [See PX-6; Tr. Vol. 1A at 38 (Myers Testimony).]

49. The following photograph is an example of a John Deere self-propelled agricultural sprayer.
[See PX-7; Tr. Vol. 1A; DN 229 at 41 (Myers Testimony).]

16

50. Deere did not begin selling trailed liquid nutrient applicators in the United States until 2013.
[Tr. Vol. 1B at 28 (Felter Testimony).] However, Deere was selling other types of nutrient
applicators, including gas and solid nutrient applicators, in the United States in 2011 and, for
some products, as early as 2009. [Tr. Vol. 1A at 35–42, 112–13 (Myers Testimony).]
51. Deere does not offer a trailed agricultural sprayer for sale in the United States.
G. FIMCO’s Use of Green and Yellow on Sprayers and Applicators
52. Today, FIMCO sells trailed agricultural sprayers and trailed liquid nutrient applicators. [Tr.
Vol. 1B at 24 (Felter Testimony); Tr. Vol. 1A at 27 (Myers Testimony).] Both of these types
of equipment require a tractor to operate. [Tr. Vol. 1B at 24–25 (Felter Testimony); see also
Tr. Vol. 1A at 45 (Myers Testimony); Tr. Vol. 5A at 73 (Schwarz Testimony).]
53. FIMCO offers its trailed sprayers and liquid nutrient applicators for sale in green and yellow;
specifically, with green bodies and frames, yellow wheels, and yellow tanks.
54. FIMCO did not begin offering trailed liquid applicators until approximately 2005 or 2006.
[Tr. Vol. 3B at 60 (Vaughan Testimony).]

17

55. Unlike Deere, FIMCO has company stores that sell FIMCO products. [Tr. Vol. 5B at 52
(Wipson Testimony).] Customers can also purchase FIMCO equipment directly from
FIMCO’s website. [Id.]
56. FIMCO has used multiple brands for its agricultural equipment, including, most notably,
Schaben and Ag Spray. FIMCO phased out the Schaben brand beginning in 2013 and
consolidated its brands under the Ag Spray brand. [Tr. Vol. 1A at 47–48 (Myers Testimony);
Tr. Vol. 5B at 48–29 (Wipson Testimony).]
57. The following is an example of a FIMCO Ag Spray-branded nutrient applicator. [See PX331.]

58. The following is an example of a FIMCO trailed agricultural sprayer. [See PX-301.]

18

59. FIMCO’s trailed sprayers and applicators are predominantly painted green and yellow,
though customers can also order their equipment in other colors. [See Tr. Vol. 3B at 60–61
(Vaughan Testimony).]
H. When FIMCO Began Selling Green and Yellow Agricultural Sprayers
60. A dispute exists in this case as to when FIMCO first began using green and yellow on trailed
agricultural equipment.8 As the Court noted above, FIMCO was incorporated in 1966.
However, FIMCO claims that its alleged predecessor in interest company, J-D-D Lubricants
Company (“JDD Lubricants” or “JDD”), first began using green and yellow on agricultural
products in the early to mid-1900s, and that that use can be attributed to FIMCO.

8

  As the Court will address in detail below in its Conclusions of Law, this determination is relevant to Deere’s
trademark dilution claim.  

19

61. Before he and others incorporated FIMCO, Vaughan’s father, Tom Vaughan, worked at JDD
Lubricants. [Tr. Vol. 3A at 42 (Vaughan Testimony).] In this case, FIMCO alleges that
FIMCO was formed using assets that were purchased from JDD when it was in bankruptcy.
62. In support of this argument, FIMCO has produced multiple contracts, in addition to various
categories of circumstantial evidence, which it contends demonstrate that certain assets were
purchased from JDD and, in turn, used to form FIMCO.
(1) DX-167A
63. The first of these documents is DX-167A,9 which is a document labeled “Contract” which
states that it was entered into between J.D.D. Manufacturing Co., Robert J. Hoefer, William
H. Hoefer, Chris P. Hoefer, and Jon M. Cochran, “not individually, but as an agent for a
group of Investors.” [DX-167A at 1.]
64. DX-167A recites that “J.D.D. is insolvent” and that “Cochran, as agent for a group of
investors, desires to purchase certain assets of J.D.D.” [Id.]
65. DX-167A further recites that “J.D.D. agrees to sell, assign, transfer, and convey to Cochran,
or his designee and/or assignee, the equity of record in” six categories of property. [Id. at 2.]
These categories include (a) “merchandise and inventory as set out in Exhibit A hereto
attached,” (b) “machinery and equipment, furniture, office machines, fixtures, and trade
fixtures as set out on Exhibit B hereto attached,” (c) “trucks, vehicles, and other rolling stock
set out on Exhibit C hereto attached,” (d) “accounts receivable set out on Exhibit D hereto
attached,” (e) “patents, trademarks, copyrights and tradename set out on Exhibit E hereto
attached,” and (f) “all real estate owned by J.D.D. consisting of land and buildings in the

9

DX-167, which FIMCO initially introduced, was an incomplete copy of the document due to a copying error. DX167A is a correctly-copied version of the document with all pages intact.

20

vicinity of 1st and Court Streets, Sioux City, Iowa, more specifically described on Exhibit F
hereto attached.” [Id.]
66. DX-167A provides that, in exchange for the above-described property, Cochran agreed to
pay J.D.D. $60,000. [Id.]
67. The “Contract” portion of DX-167A is seven pages. [Id. at 1–7.] DX-167A also has six
exhibits attached, Exhibits A, B, C, D, E, and F.
68. Exhibit E to DX-167A identifies the trademarks being transferred from J.D.D. to Cochran as
“J-D-D,” “Big Butch”, and Spra-White.” [See DX-167A at Exhibit E.]
69. Exhibit C to DX-167A lists “J-D-D Manufacturing Co. Fixed Assets,” specifically, trucks
and automobiles. [See DX-167A at Exhibit C.] Exhibit C to DX 167A also has what appears
to be handwriting on it. Portions of Exhibit C appear to have been underlined and the last
three lines have lines drawn through them. Dollar amounts are written to the right of nearly
each truck and automobile listed in Exhibit C. Underneath all listed trucks and automobiles,
the dollar amounts are totaled to “$57600.00,” however that figure also has a line drawn
through it.
(2) DX-204
70. At trial, Deere pointed out, as it had also done prior to the start of the trial, that DX-167, the
first “Contract” document FIMCO produced, was incomplete in that the bottoms of each
page were cut off. [See Tr. Vol. 4A at 72–79 (Vaughan Testimony); Tr. Vol. 4B at 3–5.]
71. In response, FIMCO’s counsel contacted Joe Gill, FIMCO’s CFO, to request a complete
copy of the document. [Tr. Vol. 4B at 6.] What Gill sent, however, was DX-204, a document
which Deere pointed out is actually a different document than DX-167.

21

72. To remedy this confusion, FIMCO’s counsel again contacted Gill, who overnighted a box of
FIMCO records that was taken from the safe at FIMCO’s office in Sioux City, Iowa to
Paducah, Kentucky. [See Tr. Vol. 5B at 138–43.]
73. One of the documents included in this box of documents was DX-167A, which the parties
agree appears to be a complete copy of DX-167, which FIMCO initially introduced but was
incomplete due to a copying error. [Tr. Vol. 5B at 142–43; see also footnote 9, supra.]
74. Another document included in the box was DX-204, which is a document that is nearly
identical but varies slightly from DX-167A.
75. DX-204 is a series of unstapled pages, though there are staple marks at the top indicating that
the document was stapled at one time. The first seven pages of DX-204 are identical to the
first seven pages of DX-167A. See DX-204 at 1–7. Specifically, the first page is labeled
“Contract” and contains the same identified parties, recitals, purchase price, and identical
signatures as DX-167A. [See DX 167A; DX 204.]
76. DX-204 also has some handwriting on it. The words “Purchase Agreement” are handwritten
on the top left hand corner of the first page and “Schedule B” is handwritten on the top right
hand corner of the first page.
77. Additionally, unlike DX-167A, DX-204 is missing Exhibit B. In DX-167A, Exhibit B is a ten
page long exhibit detailing the machinery, tools, equipment, office furniture and fixtures, and
factory furniture and fixtures that were to be transferred from JDD to Cochran in the sale of
assets. [See DX 167A, Exhibit B at 1–10.]
78. However, DX-204 contains the same Exhibits A, C, D, E, and F as DX-167A, though they
are out of order. [See DX 204 Exhibits.]

22

79. Exhibit C to DX-204, unlike Exhibit C to DX-167A does not have lines or dollar amounts
drawn on it. Exhibit C does, however, have the same “Total $57600.00” written underneath
all of the listed trucks and automobiles, though the figure is not crossed out as it is in Exhibit
C to DX-167A. [See DX-204 Exhibit C.]
(3) Analyzing DX-167A and DX-204
80. Despite minor variations in handwriting and one missing Exhibit, DX-167A and DX-204 are
virtually the same document. Indeed, the Court finds that DX-167A and DX-204 are photo
copies of the same Contract.
81. DX-167A and DX-204 are both printed on slightly yellowed paper, apparently due to the old
age of both documents.
82. The seven-page “Contract” portions of both documents are printed on 8.5 x 14 inch paper, as
are some Exhibits. Some Exhibits, such as Exhibit C and E, are printed on 8.5 x 11 inch
paper in both documents.
83. The five signatures on page six of the “Contract” on both DX-167A and DX-204 are
identical, as both are photo copies of the same piece of paper. These signatures are those of
Robert Hoefer, Tom Vaughan, William Hoefer, Chris Hoefer, and Jon Cochran. [See DX167A at 6; DX-204 at 6.]
84. The two signatures on page seven of the “Contract” on both DX-167A and DX-204 are
identical, as both are photo copies of the same piece of paper. These signatures are those of
R.E. Pecaut, the Vice President and Senior Trust Officer of First National Bank in Sioux
City, Iowa, and Milton Glazer. [See DX-167A at 7; DX-204 at 7.]
85. When held up to the light, the bottoms of several pages of both DX-167A and DX-204 have
the words “Xerox Copy Paper” watermarked on them. [See DX-167A; DX-204.]

23

Accordingly, the Court finds that neither DX-167A nor DX-204 is the original “Contract”
between JDD, the Hoefers, and Cochran. However, the Court finds that both documents are
copies of the original Contract between those parties and adequately evidence the original
document.
86. This is further evidenced by the fact that the signatures in each document are identical copies
of each other. Moreover, though DX-204 is missing Exhibit B and though the remaining
Exhibits in DX-204 are out of order, the Court finds that this is of minimal importance, as the
fact that DX-204 has had the staples removed likely explains the disordered and missing
pages. In all relevant aspects, DX-167A and DX-204 are the same and do not contradict each
other.
87. Deere argues that the inconsistencies between DX-167A and DX-204 warrant exclusion of
all documents in their entirety. The Court disagrees. Rather, the Court is satisfied that such
inconsistencies are minimal and do not compromise the probative value of the documents.
Accordingly, Deere’s objections to the admission of DX-167A and DX-204 are overruled.
(4) Whether FIMCO Proved that the Contingencies Outlined in DX-167A and DX-204
Were Carried Out and Whether they, Together with Other Evidence, Demonstrate
that the Assets Purchased by Cochran Were Used to Form FIMCO
88. The next issue for the Court becomes whether there is sufficient evidence to find that the
contingencies outlined in DX-167A and DX-204 (together, the “Contract”) were carried out
and whether those assets were acquired by and used to form FIMCO. Though there is no
direct evidence as to these findings, there is some circumstantial evidence.
89. The parties agree that DX-167A and DX-204 do not make any reference to FIMCO. [Tr. Vol.
4A at 80 (Vaughan Testimony); see also DX-167A; DX-204.]

24

90. Moreover, Vaughan admitted at trial that he does not have tangible proof that the
contingencies detailed in the agreement were, in fact, carried out. [Tr. Vol. 4A at 83–90,
100.] However, Vaughn testified multiple times that “common sense would tell [him] the
transaction would not have gone through if those things would not have been taken care of.”
[Id. at 100.]
91. Additionally, as Deere has pointed out repeatedly, Vaughan does not “actually have any
documents showing that FIMCO, as a corporation, actually acquired any assets from J-D-D.”
[Id. at 68, 100; see also DN 193 at 7 (“FIMCO admits it does not have the assignment
between the investors placing the assets into FIMCO.”).]
92. However, FIMCO was incorporated just ten days after Cochran purchased the “certain
assets” outlined in the agreement. DX-167A and DX-204, which the Court finds sufficient to
evidence the Contract between JDD, the Hoefers, and Cochran, are dated December 31,
1965. [See DX-167A; DX-204.] FIMCO’s Articles of Incorporation were filed just ten days
later on January 10, 1966. [DX-168.] Cochran, who purchased the assets from JDD, is listed
as an incorporator of FIMCO along with Tom Vaughan, Milton Glazer, and two others. [DX168 at 3.]
93. The Contract lists certain contingencies, including that Cochran is to pay JDD $60,000 by
delivering that sum to First National Bank in Sioux City, Iowa, as the escrow holder, on or
before January 5, 1966; that JDD will deliver the assets to First National Bank on or before
January 5, 1966; that JDD will deliver all deeds, bills of sale and assignments to Cochran that
are necessary to effectuate the transfer of the assets; that, on January 10, 1966, the First
National Bank will pay the $60,000 to JDD’s creditors, and that between January 1, 1966 and
the date on which possession is transferred, Milton Glazer would assume possession of all of

25

JDD’s assets as trustee in possession with right to operate in the interim. [See DX-167A; DX204.]
94. True, Vaughan does not have documents showing that the contingencies in the contract were
carried out. [Tr. Vol. 4A at 83–90, 100 (Vaughan Testimony).] As a result, Deere asserts that
“it has not been established that any of the assets that are the subject of the [Contract] were,
in fact, transferred or could, in fact, be transferred to FIMCO.” [Tr. Vol. 3A at 120-21.]
However, the corresponding dates between the Contract and the Articles of Incorporation,
along with other circumstantial evidence, does tend to suggest that the contingencies were
sufficiently carried out and that the assets were, in fact, transferred to FIMCO.
95. For instance, after its incorporation, FIMCO operated the same plant that JDD operated out
of. [Tr. Vol. 3A at 70, 121 (Vaughan Testimony).]
96. There is also evidence that FIMCO continued to manufacture and sell some of the products
that JDD manufactured and sold. [Tr. Vol. 3A at 78 (Vaughan Testimony).] Specifically,
FIMCO remained in the oil business until approximately 1982. [See id at 132.] Among the
evidence introduced at trial was a photograph of two old empty motor oil cans sitting side by
side. [DX-12.] Both cans have “J-D-D” printed at the top, but the can on the right also has
“FIMCO, Inc.” printed at the bottom. [Id.] Vaughan explained that, after he started working
at FIMCO, he observed other empty oil cans that did not have “FIMCO” printed on them
from “before we owned the business.” [Tr. Vol. 3A at 122–24.]
97. However, the relevant question for trademark purposes is not whether the contingencies of
the Contract were carried out or whether FIMCO acquired the assets of JDD, but whether
FIMCO “acquired the trademarks and good will of [JDD], the bankrupt” entity. 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 18:29 (5th ed.). In making

26

that determination, “[t]he test is whether the assets purchased are sufficient to enable the
buyer to ‘go on in real continuity with the past.’” Id. (citing Merry Hull & Co. v. Hi-Line Co.,
243 F. Supp. 45, 51 (S.D. N.Y. 1965); see also Mut. Life Ins. Co. v. Menin, 115 F.2d 975,
977 (2d Cir. 1940). Today, courts focus on whether the transfer of assets and trademarks
enable the purchaser “to produce the goods at quality levels identical to those enjoyed by”
the previous owner’s customers before the transfer. Matter of Roman Cleanser Co., 802 F.2d
207, 209 (6th Cir. 1986). Specifically, “a trademark may be validly transferred without the
simultaneous transfer of any tangible assets, as long as the recipient continues to produce
goods of the same quality and nature previously associated with the mark.” Defiance Button
Mach. Co. v. C & C Metal Prod. Corp., 759 F.2d 1053, 1059 (2d Cir. 1985). In other words,
“[a]s long as the mark has significant remaining value and the owner intends to use it in
connection with substantially the same business or service, the public is not deceived.” Id. at
1060. See also Restatement (Third) of Unfair Competition § 34 (1995) (“In the final analysis,
the question is whether the assignee has acquired enough of the assignor’s business to
maintain continuity in the use of the designation. Thus, some courts now recognize that an
assignment of a mark followed by the assignee’s use of the designation to identify goods,
services, or a business substantially similar to the assignor's is itself sufficient to permit the
assignee to assert the assignor's priority in the use of the designation. An assignee’s use is
substantially similar to the use by the assignor if the expectations of consumers who rely on
the presence of the designation after the assignment will be substantially fulfilled.”).
98. In this case, even assuming, though without deciding, that sufficient evidence exists from
which to infer that FIMCO acquired the “certain assets” of JDD such that it also acquired
rights in the timing of JDD’s use of green and yellow, the relevant inquiry is whether FIMCO

27

actually carried on using the green and yellow “in real continuity” with JDD’s past use of
green and yellow. FIMCO offered three categories of evidence as to this point. First, FIMCO
offered several FIMCO “Sprayer Parts Books” from 1966 to 2000; second, the trial testimony
of Kevin Vaughan; and third, the designated deposition testimony of Robert Conley.
However, as the Court will discuss below, having considered all of this evidence, the Court
finds that FIMCO has not carried its burden of proving “real continuity” with JDD’s use of
green and yellow on trailed agricultural sprayers by a preponderance of the evidence.
99. The first evidence of JDD’s use of green and yellow on a piece of trailed agricultural
equipment comes from 1957. Specifically, FIMCO offered into evidence photographs of
trailed agricultural sprayers painted green and yellow that are dated December 9, 1957. [Tr.
Vol. 3A at 84–85 (Vaughan Testimony); [see also DX-10, DN 244-6 at 16–21.]10 In all three
photographs, the sprayer is attached to a John Deere tractor.
100.

But aside from the December 1957 photographs of a JDD “Big Butch” green and yellow

trailed sprayer attached to a John Deere tractor, FIMCO did not produce any photographs of
subsequent trailed agricultural equipment sold by JDD. FIMCO provided “Big Butch” Parts
Books from 1962, 1963, and 1964, however, none of these feature actual photographs and
none feature whole agricultural sprayers. [See DX-14; DX-15; DX-16.] Though these Parts

10

 At trial, FIMCO initially introduced DX-10, which FIMCO’s counsel explained is a photocopied version of DX203, a green binder containing various historical JDD and FIMCO documents. Deere objected to the admission of
both DX-10 and DX-203, arguing that they are “a whole mélange of documents collected together, not in their
original form, and many of it is separate pages so that you can’t even tell where they came from or what the date is.”
[Tr. Vol. 3B at 27–28.] In most respects, the Court agrees. However, with respect to the December 1957
photographs, the Court finds them to be properly authenticated due to the date stamps on the back of each. [See
DX-10, DN 244-6 at 16–21.] And with regard to the loose leaf advertisements for sprayers and canopies which
the Court references, the Court only relied on them for the purpose of agreeing with Deere that those documents do
not prove that FIMCO carried on JDD’s use of green and yellow. Accordingly, Deere’s objections to the admission
of DX-10 and DX-203, in only these limited respects, are overruled.
Next, though FIMCO ultimately introduced DX-203, which is the original green binder containing the large
collection of documents, herein, the Court will refer to DX-10, a photocopy of many of those documents, which is
part of the electronic record in the case, for purposes of making it clear to the readers to which pages the Court is
referring.

28

Books have some green and yellow colors on the front covers and on some pages inside, they
are not shown on any agricultural equipment. [See DX-14; DX-15; DX-16.] Moreover, each
of these three parts books is dated before FIMCO’s 1966 incorporation. FIMCO also
produced two loose-leaf illustrated advertisements which depict green and yellow JDD “Big
Butch” sprayers, however, FIMCO was unable to date either of these advertisements. [See
DX-10, DN 244-7 at 7, 14–15.]
101.

Even more importantly, FIMCO has not produced any photographs or even illustrated

advertisements of green and yellow whole agricultural sprayers sold by FIMCO from the
time of its incorporation in 1966 until 1998. Though FIMCO introduced various pieces of
evidence that, in some instances, contain green and yellow colors, the colors are never on
whole agricultural equipment and never in actual photographs. For instance, FIMCO
presented an example of FIMCO’s letterhead which describes FIMCO as “manufacturers of
JDD oils and greases” and “Big Butch farm and industrial equipment.” [DX-18.] In addition,
FIMCO produced “Sprayer Parts Books” from 1966, [DX-19], 1967, [DX-20]; 1968, [DN
21], 1969, [DX-22], 1970, [DX-23], 1971, [DX-24], 1972, [DX-25], 1973, [DX-26], 1974,
[DX-27], 1975, [DX-28], 1976, [DX-29], 1977, [DX-30], 1978, [DX-31], 1979, [DX-32],
1980, [DX-33], 1981, [DX-34], 1982, [DX-35], 1983, [DX-36], 1984, [DX-37], 1985, [DX38], 1986, [DX-39], 1987, [DX-40], 1988, [DX-41], 1989, [DX-42], 1990, [DX-42], 1991,
[DX-44], 1992, [DX-45], 1993, [DX-46], 1994, [DX-47], 1995, [DX-48], 1996, [DX-49],
and 1997, [DX-50]. Though some of these parts book mention “Big Butch,” none of them
advertise or depict a fully-assembled Big Butch agricultural sprayer in green and yellow or
even sprayer parts in green and yellow. At most, some of the catalogs, such as the 1969
catalog, have portions of pages that are colored green and yellow, but not on any agricultural

29

equipment. [See DX-22.] The cover of the 1969 catalog depicts a parts cabinet on the cover,
the top portion of which is bright yellow, the bottom portion of which is grey. [Id.] The
background of the page is green on the top and bright yellow on the bottom. [Id.] However,
at no place does the catalog depict green and yellow used on a Big Butch agricultural
sprayer.
102.

The 1970, 1971, 1972, and 1973 Sprayer Parts Books depict “[m]ounted or trailer type

field sprayers,” on the last page, however, the depictions are all in black and white. [DX-23;
DX-24; DX-25; DX-26.]
103.

Moreover, the majority of the Sprayer Parts Books do not feature a green and yellow

color scheme at all throughout the pages, but rather a variety of other color combinations,
such as yellow and black, [DX-19; DX-23; DX-24], yellow and blue, [DX-20], red and
black, [DX-21; DX-25; DX-26; DX-33; DX-36; DX-37; DX-43], green and white, [DX-27;
DX-29; DX-35], red and white, [DX-28; DX-30; DX-32; DX-40; DX-41; DX-42; DX-44;
DX-46], blue and white, [DX-35], or red, white, and black, [DX-38; DX-39; DX-45; DX-49;
DX-50.]
104.

When asked about the Sprayer Parks Books, Vaughan testified that “everything in [them]

pertains to the sprayers that we have manufactured and sold for over 40, 50 years. All these
parts coincide with all the sprayers before my dad owned the company, and after my father
owned the company.” [Tr. Vol. 4B at 100 (Vaughan Testimony).] However, when asked why
none of the documents show those sprayers, Vaughan responded that the sprayers are “not on
the parts books.” [Id.] Later, Vaughan again stated that “the whole goods were not in those
[parts] books.” [Id. at 112.] However, the only books FIMCO produced from that period are

30

parts books. FIMCO did not produce for the court any other FIMCO catalogs that do show
whole sprayers.
105.

In 1996 and 1997, the titles of the books were changed to “Sprayer and Sprayer Parts

Book” rather than just “Sprayer Parts Book” as were the titles in years prior. [See DX-49;
DX-50.] Those catalogs do feature photographs of whole trailed agricultural sprayers,
however, they are all shown in red and white. [See DX-40; DX-50.] Specifically, the cover of
the 1996 Sprayer and Sprayer Parts Book shows a trailer sprayer with a white tank, white
wheels, and a red frame and accents. [DX-49; DN 221-1 at 65–66 (Robert Conley Deposition
Testimony).] The cover of the 1997 Sprayer and Sprayer Parts Book features a wheeled
trailed sprayer with a white tank, red frame, and red boom. [DX-50; DN 221-1 at 67 (Conley
Deposition Testimony).]
106.

Not until the 1998 “Sprayers & Sprayer Parts” catalog do we see an actual photograph of

a green and yellow trailed agricultural sprayer. [DX-51.] Specifically, the cover of the 1998
catalog features a green and yellow trailed agricultural sprayer being pulled by a John Deere
tractor. [Id.] 1998 was also the year FIMCO acquired the Schaben brand. [Tr. Vol. 3B at 81
(Vaughan Testimony).]
107.

Vaughan testified at trial that FIMCO did continue to make and sell certain products that

JDD made and sold. For example, Vaughn testified that FIMCO “carried forward” a JDD
green and yellow canopy “that went on tractors and combines and swathers.” [Tr. Vol. 3A at
77–78 (Vaughsn Testimony); DX-10, DN 244-4 at 1.] However, the only evidence the Court
has of such a green and yellow canopy is from a JDD Lubricants advertisement, with no
tangible evidence that the same product was later sold by FIMCO. Vaughan’s testimony,
without any corroborating evidence, is insufficient.

31

108.

With regard to the December 1957 photographs of green and yellow Big Butch

agricultural sprayers, Vaughn testified that, in his time working at FIMCO, FIMCO “made
this sprayer for many years.” [Tr. Vol. 3A at 85 (Vaughan Testimony).] However, Vaughan
then testified that his work with that particular type of Big Butch sprayer consisted of selling
replacement parts for used sprayers rather than manufacturing any new sprayers. [Id. at 86.]
Vaughan also stated that he “still ha[s] people come in and ask for parts for sprayers like this
today.” [Id.] However, Vaughan’s testimony specifically focused on selling parts for that
type of sprayer.
109.

Though Vaughan testified that there was a time when FIMCO was selling new Big Butch

sprayers, Vaughan testified that his recollection of this was from when he “was just a little
kid.” [Id. at 88.] Specifically, Vaughn testified that when he “was little,” he used to help
stencil “Big Butch” on agricultural sprayers as they were being put together. [Id.] However,
the fact that Vaughn’s recollection of these events is from when he was a small child,
combined with the fact that no tangible evidence exists showing a green and yellow Big
Butch sprayer following FIMCO’s incorporation, leads the Court to give this testimony little
weight.
110.

Vaughan also testified that, in his time working at FIMCO, he often referenced JDD

sprayer catalogs from before FIMCO’s incorporation in 1966. Vaughn explained that
customers who had bought JDD sprayers in, for example, 1957, 1961, or 1962, would come
in to FIMCO to buy replacement parts. [Id. at 96.] According to Vaughan, farmers would
reference old JDD catalogs to identify the sprayer they had purchased, which would then
allow FIMCO employees to determine which parts the farmer needed. [Id.] However, at the
very most, this testimony, along with the many FIMCO “Sprayer Parts Books,” show that

32

FIMCO was in the business of selling replacement parts for JDD sprayers. There is still no
evidence that FIMCO sold whole green and yellow agricultural sprayers in continuity with
JDD’s past business of doing so.
111.

What’s more, during many of the events about which Vaughan sought to testify, Vaughan

was a young child. Vaughan was born on November 25, 1960. [Id. at 32.] FIMCO was
incorporated when Vaughan was about six years old, on January 10, 1966. [Id. at 54; DX-168
(FIMCO Articles of Incorporation).] Though the Court has great respect for Vaughn’s
intimate involvement with FIMCO from a very young age, it is nonetheless hesitant to rely
on certain portions of his testimony relating to that early time period without accompanying
corroborating evidence.
112.

Vaughan also testified that “[w]hen the ag economy was going down in the ’80s and the

farm crunch hit and farmers’ farms were getting repossessed, the farm stores basically
walked away from the big trailer sprayers, the side mounts, and the pull-type sprayers.” [Tr.
Vol. 3A at 130 (Vaughan Testimony).] And “as the economy changed . . . the farm stores
said, ‘We want to stay in the sprayer business, but we’re going to get in the lawn and garden
business. We’re going to start selling push mothers, string trimmers, and riding tractors.’”
[Id. at 131.] Vaughn explained that, when FIMCO got into the lawn and garden business,
“that’s where FIMCO started to take off.” [Id.] According to Vaughan, FIMCO “never
walked away from the ag business. There just wasn’t that much business there. People
weren’t buying stuff. The ag economy was in a serious recession.” [Id. at 132.]
113.

Robert Conley, who testified by designated deposition testimony, worked at FIMCO

from 1972 until his retirement in 2011. [DN 221-1 at 5–6 (Conley Deposition Testimony).]
Though FIMCO asserts that Conley testified that he “personal[ly] observed FIMCO’s use of

33

the colors green and yellow on tractor towed agricultural sprayers,” [DN 338 at 24], the
Court does not find this testimony to be persuasive. As an initial matter, the majority of
Conley’s testimony was that, during his time at FIMCO, “customers would come in and ask
for parts to repair their equipment. And there’s a way to identify some of this equipment. We
used old catalogs and such from the previous company and from the start of FIMCO in, I
believe, ‘66.” [Id. at 6.] Conley worked in the “parts room” at FIMCO from approximately
1973 to 1981, the focus of which “was filling parts orders that were phoned in and ship[ping]
them out to dealers, customers around.” [Id. at 24.] When asked “whether FIMCO, starting in
1966, continued to sell similar sprayers in green and yellow colors” as JDD had before,
Conley responded “Yes.” [Id. at 48.] Though he acknowledged that he did not begin working
at FIMCO until 1972, he testified that he knew that FIMCO had sold green and yellow
sprayers between 1966 and 1972 because he helped customers service FIMCO sprayers from
that time period after he began working there. [Id. at 49.] Conley testified that, to identify the
correct parts to service those sprayers, he referenced “old [FIMCO] catalogs” that featured
those sprayers. [Id.] However, FIMCO did not provide the Court with any of the FIMCO
catalogs from that period from which a customer could have identified which agricultural
sprayer they owned. Rather, the only thing FIMCO produced are the “Parts Books” that do
not depict fully assembled sprayers in green and yellow, but rather only advertise sprayer
parts, and usually in black and white. Yet again, without corroborating evidence, the Court is
not inclined to give much weight to Conley’s testimony relating to events that occurred from
1966 to 1972, prior to the start of his employment with FIMCO.
114.

In sum, the Court finds that FIMCO has shown that it continued to sell replacement parts

for Big Butch sprayers and, later, after the Big Butch name was phased out, sprayer parts

34

more generally. However, the Court finds that FIMCO has not carried its burden of proving,
by a preponderance of the evidence, that FIMCO continued to manufacture and sell whole
green and yellow trailed agricultural sprayers and/or applicators. Because FIMCO has failed
to prove this by a preponderance of the evidence, it has likewise failed to show that it carried
on this aspect of JDD’s business “in continuity.” Therefore, FIMCO has failed to prove by a
preponderance of the evidence that it continued to manufacture trailed agricultural sprayers
in green and yellow between its formation in 1966 and when it first appeared in a Sprayer
and Sprayer Parts Book in 1998.
I. Other Common Colors Used on Agricultural Sprayers and Applicators
115.

After John Deere, the other main brand of tractor in the United States is sold by Case

International, also known as Case IH. Case IH uses predominantly “red and black or gray” on
its tractors. [Tr. Vol. 1B at 47 (Felter Testimony); Tr. Vol. 5A at 107 (Yeazel Testimony); Tr.
Vol. 5B at 51 (Wipson Testimony).]
116.

To match Case IH’s red tractors, many short line manufacturers also sell trailed

agricultural equipment in red and black. [Tr. Vol. 3B at 54 (Vaughan Testimony); Tr. Vol.
5A at 107 (Yeazel Testimony).]
J. Deere’s Enforcement Efforts Regarding Other Companies’ Use of Green and Yellow
117.

Several other companies in addition to FIMCO have made use of a green and yellow

color combination on agricultural equipment throughout the years. [See Tr. Vol. 1A at 63–64
(Myers Testimony).]
118.

Myers testified that, from the late 1980s through today, Deere has actively enforced its

trademarks involving the use of green and yellow on agricultural equipment. [Tr. Vol. 1A at
58 (Myers Testimony).]

35

119.

In 1989, Deere reached a settlement agreement with Bradford Industries, Inc. under

which Bradford “agree[d] to cease using a green color on its agricultural equipment to the
same extent that Unverferth Manufacturing Company, Inc. is required to cease using a green
color on its agricultural equipment pursuant to the terms of any Injunction issued by the
Court in the suit pending . . .” [See PX-364 at 2.]
120.

On September 26, 1990, Deere obtained a civil judgment against Unverferth

Manufacturing Co., Inc. in the Northern District of Ohio. [See PX-629 at 1–2.] Pursuant to
that Judgment, the court “permanently enjoined [Unverferth] from making or selling
agricultural equipment bearing any of [Deere’s] trademarks or trade dress comprising a green
color with yellow trim, including . . . defendant’s trademark consisting of a green vehicle
body or frame with yellow wheels, as covered by U.S. Trademark Registration No. 1, 502,
103.” [Id. at 1.]
121.

Between 2001 and July 2016, Deere corresponded with companies it believed to be

infringing on its trademarks via letter and email requesting that such companies cease the use
of the green and yellow color combination. [See PX-350–355; PX-358; PX-361, PX-363–
365, PX-367, PX-369, PX-371, PX-375, PX-378, PX-381, PX-382, PX-384, PX-386, PX388, PX-390–393, PX-395–404, PX-407–412, PX-414–416, PX-420–431, PX-433, PX-438,
PX-439, PX-441–443, PS-445–447, PX-456–458, PX-462, PX-463, PX-465, PX-479, PX480, PX-484, PX-485, PX-490–498, PX-500–502, PX-504, PX-505, PX-507, PX-508, PX514, PX-518, PX-520, PX-524, PX-525, PX-530, PX-532, PX-544–547, PX-549, PX-552,
PX-553, PX-562, PX-563, PX-565–574, PX-576, PX-578, PX-580–583, PX-586, PX-588,
PX-597, PX-601, PX-604–608, PX-610–615, PX-617, PX-624–626, PX-628–639.]11

11

 Though FIMCO objected to several of Deere’s exhibits regarding its trademark enforcement correspondence on
grounds of hearsay, Rule 401, and Rule 403, [DN 282], the Court admitted all of these exhibits at trial. [Tr. Vol. 1A

36

122.

Some of these communications resulted in settlement agreements in which the allegedly

infringing companies agreed to cease use of the green and yellow color combination. [See,
e.g., PX-353; PX-364.]
123.

In total, out of the approximately forty companies which Deere asked to cease use of the

green and yellow color combination, “all but three of them agreed to stop.” [Tr. Vol. 1A at
64 (Myers Testimony).] These three companies include Bestway (also known as RHS),
Unverfeth (which owns Top Air), and FIMCO. [Id.]
K. Deere’s Knowledge of FIMCO’s Use of Green and Yellow
124.

Deere claims (through Myers, its corporate representative) that it first learned of

FIMCO’s use of green and yellow in 2011. [Id. at 67.] Specifically, Myers stated that he
observed FIMCO equipment painted green and yellow at a farm show called the Farm
Progress Show. [Id.] Myers testified that, thereafter, he reported his observation to Deere’s
trademark department. [Id.] Myers also testified that, in preparation for his testimony as
corporate representative, he “learned that there was a report to the Deere trademark law
group about FIMCO using green and yellow colors in 2010.” [Id.]
125.

Between November 2012 and March 2015, Deere corresponded with FIMCO in an

attempt to get FIMCO to cease its use of green and yellow on its agricultural equipment. [Id.
at 67–68.] When those attempts failed, Deere brought the instant suit in April 2015. [See DN
1 (Complaint).]
126.

FIMCO asserts, however, that Deere must have learned about its use of the green and

yellow color scheme prior to 2010 or 2011 due to old correspondence with JDD, FIMCO’s

at 59–61.] The Court did so on the basis that Deere was offering these exhibits under the business records exception
to the hearsay rule. [Id.] Additionally, because the Court did not rely on these exhibits for the truth of their contents,
but rather only as evidence that Deere sent various pieces of enforcement correspondence, the Court need not
exclude them on hearsay grounds.  

37

alleged predecessor, FIMCO’s sales of its products, and the close proximity of Deere and
FIMCO products at various farm shows. [See, e.g., Tr. Vol. 4B at 152 (Vaughan
Testimony).]
(1) Deere’s Correspondence with JDD
127.

In a letter dated April 21, 1944, Deere’s counsel sent a demand letter to Chris Hoefer, the

President of JDD Lubricants, in reference to Deere’s concern that the letters “JDD” were
meant to stand for “John Deere Dealers.” [See DX-164.] Therein, Deere’s counsel states that
Deere considered the “revised form of label” that FIMCO submitted and “decided to take the
position that the new label will not be an infringement upon our trade-mark rights, provided
that you follow our suggestion to insert the name, HOEFER, in prominent letters above the
letters J-D-D, and include on the label a notice similar to the one you originally had there to
the effect that the J-D-D Lubricants Co. is the only company connected with or responsible
for the manufacture or distribution of J-D-D Motor Oil without our name appearing in such
notice. We also ask that you do not use any statements in any of your advertising matter from
which it might be inferred that the letters J-D-D mean John Deere Dealers.” [Id.]
128.

In a letter dated October 2, 1946, JDD’s counsel sent a letter to Chris Hoefer explaining

that Deere did not object to the new labels JDD was using. [See DX-165.]
129.

In a letter dated September 18, 1963, Deere’s Counsel sent another letter to JDD’s

counsel. Therein, Deere’s counsel wrote that “The use of the letters J-D-D (which apparently
stand for John Deere Dealers) together with the use of the John Deere colors; yellow and
green, on the [motor oil] containers tend to mislead a purchaser into believing that he is
buying a product made by John Deere, whether or not such deception is actually intended.
Referring to the matter of intent, however, it would seem clear that the name “J-D-D” and the

38

yellow and green colors were deliberately chosen for a purpose.” [See DX-166.] Deere’s
counsel further stated that, though Deere “d[id] not require our dealers to refrain from
handling competing products, it is nonetheless our intention to see that the ultimate customer,
i.e., the farmer or other owner of the machine, is not misled into thinking he is buying a John
Deere product when in fact he is not.” [Id.]
130.

Though DX-166 indeed reflects that Deere knew of JDD’s use of green and yellow on oil

cans, it does not establish that Deere had any knowledge of JDD’s alleged use of green and
yellow on Big Butch sprayers. [See Tr. Vol. 4A at 117 (Vaughan Testimony).] Moreover,
Vaughan agreed that he had no way of knowing whether Deere ever discovered that JDD
used green and yellow on other agricultural equipment. [Id. at 118.]
131.

Contrary to FIMCO’s contention, the evidence shows that Deere did enforce its

trademarks against JDD both with regard to its use of the letters “JDD” and its use of green
and yellow on motor oil cans.
(2) FIMCO’s Equipment Sales and Display of Green And Yellow Equipment at Farm
Shows
132.

Vaughan testified at trial that, from 1981 forward, he attended farm shows at which

FIMCO prominently displayed its green and yellow equipment. [Tr. Vol. 3B at 92 (Vaughan
Testimony).] However, as the Court found above, FIMCO did not provide adequate evidence
proving that it sold green and yellow trailed agricultural equipment until pictures of that
equipment appeared on the cover of its 1998 Sprayers Sprayer Parts catalog. [See DX-51.]
133.

Vaughan further testified that “John Deere corporate” was present at many of the same

farm shows where FIMCO featured its green and yellow equipment and that Deere “would
come in [FIMCO’s] booth. They would take pictures. They even talked to us about making
lawn and garden sprayers for them.” [Tr. Vol. 3B at 92 (Vaughan Testimony).] However,
39

FIMCO presented no pictures of its green and yellow equipment at farm shows during this
time period and presented no evidence as to when and at which farm shows it allegedly
encountered “John Deere corporate.” Moreover, during his deposition, FIMCO’s counsel
asked Vaughan whether Deere attended the same farm shows as FIMCO and whether “there
[is] any way [Vaughan] could imagine that John Deere would not have been able to know
that for the last 50 years FIMCO has been using each and every year the colors green and
yellow.” [Tr. Vol. 4B at 154 (quoting Vaughan Deposition).] In response, Vaughan stated
only that “They would have to be blind.” [Id.] Vaughan did not mention anything about
Deere taking pictures of FIMCO equipment at farm shows or discussing the possibility of
FIMCO manufacturing lawn and garden sprayers for Deere. Moreover, when asked on crossexamination how Vaughan knew the individuals who had taken pictures of FIMCO
equipment were from John Deere corporate, he replied simply that “[t]hey had shirts on that
said John Deere.” [Id. at 155.] However, Vaughan stated multiple times that these events
took place “a long time ago . . . Many years ago.” [Id.] The Court finds this testimony, by
itself, to be insufficient to establish that individuals responsible for trademark enforcement at
Deere had knowledge of FIMCO’s use of green and yellow by virtue of the display of those
colors at farm shows.
134.

Although Doug Felter testified that he first learned of FIMCO’s Schaben brand, and its

use of green and yellow, at a farm show in 2008 or 2009, he testified that he did not report
this observation because he “didn’t recognize the need to.” [Tr. Vol. 1B at 24 (Felter
Testimony).]
135.

Moreover, though some dealers sell both Deere and FIMCO products, John Deere dealers

are not employed by Deere, not controlled by Deere, and are not required to police Deere’s

40

trademarks in any way. [Id. at 19–20.] Moreover, Deere does not place any limitations or
restrictions on the types or brands of products that its dealers may sell. [Id. at 20.]
136.

Additionally, Deere offered evidence at trial that FIMCO’s business has expanded

dramatically in several ways since the mid-1990s, including expansion in FIMCO locations,
employees, salespeople, advertising expenditures, and farm show attendance. [See Tr. Vol.
4A at 40–59 (Vaughan Testimony).] This, too, lends support for a finding that Deere did not
have knowledge of FIMCO’s use of green and yellow equipment until 2010 or 2011.
a) Expansion of FIMCO locations
137.

Vaughan testified that until the mid-1990s, the only location at which FIMCO had

operations was in Sioux City, Iowa, and North Sioux City, South Dakota. [Id. at 41.]
138.

In 1995, FIMCO opened a location in Tempe, Arizona. [Id.]

139.

In 1998, FIMCO acquired its Schaben brand, and with it, a store in Columbus, Nebraska

and a store in Newton, Kansas. [Id. at 42.]
140.

In 1999, FIMCO opened another Schaben location in Bakersfield, California. [Id. at 42–

43.]
141.

In the early 2000s, FIMCO acquired the AgSouth brand, and with it, a location in

Kentucky. [Id. at 43.]
142.

In 2008, FIMCO acquired the AgSpray brand, and with it, locations in Dothan, Alabama

and Greenwood, Mississippi. [Id. at 43–44.]
143.

In the mid to late 2000s, FIMCO opened new locations in Fargo, North Dakota and

Mankato, Minnesota. [Id. at 44.]
144.

In approximately 2013, FIMCO opened a location in Othello, Washington. [Id. at 44–45.]

41

145.

Today, FIMCO has a total of ten locations in ten different states. [Id. at 44–46; PX-222

(2016 FIMCO Ag Spray Catalog).]
b) Expansion of FIMCO Employees
146.

In 1995, FIMCO had approximately thirty to fifty employees. [Tr. Vol. 4A at 48.]

147.

By 2000, FIMCO had between 200 and 300 employees. [Id.]

148.

The number of FIMCO employees did not increase between 2000 and 2005, when

FIMCO had approximately 125 to 200 employees. [Id. at 48–49.]
149.

Today, FIMCO employs several hundred people. [Id. at 49.]

150.

At trial, Vaughan agreed that, between 1995 and the present, “there’s been a dramatic

expansion in the number of [FIMCO] employees.” [Id. at 50.]
c) Expansion of FIMCO Salespeople
151.

Vaughan estimated that, in 1980 and 1990, FIMCO had two salespeople. [Id. at 50–53.]

152.

Vaughan estimated that, by 1995, FIMCO had three salespeople. [Id. at 53.]

153.

By 2000, Vaughan testified that the number of salespeople had jumped to between fifteen

and twenty-five. [Id.]
154.

By 2010, Vaughan estimated that FIMCO had approximately fifty salespeople. [Id.]

155.

Finally, by 2016, FIMCO had approximately sixty salespeople. [Id. at 54.]
d) Expansion of FIMCO’s Advertising Expenditures

156.

Vaughan testified in his deposition and at trial that, when his father ran the company, he

did not spend a lot of money on advertising or promotion because it was not his priority and
because his father was frugal. [Id. at 55.]
157.

By around 1995, FIMCO’s advertising budget was up to $50,000, but perhaps less. [Id. at

56.]

42

158.

In 2000, FIMCO’s advertising budget had risen to $150,000 to $200,000. [Id.]

159.

By 2011, FIMCO’s advertising budget was approximately $700,000. [Id. at 57.]

160.

In recent years, FIMCO’s advertising budget has been approximately $1 million. [Id. at

57–58.]
e) Expansion of FIMCO’s Farm Show Attendance
161.

As of 1986, FIMCO attended between six and twelve farm shows a year. [Id. at 58.] By

1995, FIMCO still attended no more than twelve shows a year. [Id.]
162.

By 2000, FIMCO was attending approximately fifteen to twenty farm shows a year. [Id.]

163.

By 2005, this figure increased to “at least a couple dozen” shows a year. [Id. at 58–59.]

164.

As of 2011, FIMCO was attending about fifty farm shows a year. [Id. at 59.]

165.

Vaughan testified that, today, FIMCO attends “maybe a little less” than fifty farm shows

a year “because the ag economy has turned down.” [Id.]
f) Summary of FIMCO’s Expansion
166.

At trial, Vaughan agreed that, overall, “we’ve seen a dramatic expansion in FIMCO’s

business in multiple respects since the late 1990s.” [Id.]
167.

Due to FIMCO’s significant expansion between the late 1990s and today, the Court finds

Myers’ testimony that Deere did not learn of FIMCO’s use of green and yellow until 2010 or
2011 to be credible.
L. Expert Testimony
(1) Confusion Expert
168.

Deere called its survey expert, Hal Poret, to testify about confusion. [See Tr. Vol. 2B

(Poret Testimony).]

43

169.

In support of its state and federal trademark infringement claims and its federal false

designation of origin and unfair competition claim, Deere submitted Poret’s two confusion
surveys, a 2014 Schaben Confusion Survey and a 2016 Ag Spray Confusion Survey. [Id. at
9.]
170.

Poret used identical methodologies to conduct the Schaben Confusion Survey and the Ag

Spray Confusion Survey, with the only difference being that the Ag Spray Confusion Survey
had a larger sample size. [Id. at 10.] There were 100 participants in the Schaben Confusion
Survey and 200 participants in the Ag Spray Confusion Survey. [Id. at 12.]
171.

To collect the respondents for each survey, Poret “used an online panel that was crop

farmers, and the screening questions ensured that the only people who took the survey were
those who work with sprayers and applicators.” [Id. at 10.] The group of respondents
included “anybody who works with that equipment,” rather than being limited solely to
purchasers of the relevant equipment, because, according to Poret, “in the case of large items
like farming equipment where there might be some purchasers but many people who work
with the equipment and encounter it every day, it’s common to define consumers to include
the types of people who work with the equipment.” [Id. at 11.] Specifically, “the survey was
assessing whether there would be confusion when encountering the equipment in the field,
not literally in a sales situation. So it made sense to survey the kinds of people who will
encounter the equipment in the field to see if there’s confusion out there.” [Id.] However,
“anybody who worked in advertising or market research or for a company that manufactures
farming equipment or who has somebody in their family in one of those positions was
screened out, which is a standard quality control procedure.” [Id.]

44

172.

Poret designed each survey as an “Eveready” survey, which “is one where you only show

[respondents] the allegedly infringing equipment and you ask questions to see if on their own
people name the plaintiff.” [Id. at 14.] Poret testified that he used the Eveready method in
this case “because it's more conservative. Because the only way confusion can occur is if the
people taking the survey look at the green/yellow, check Schaben or Ag Spray equipment,
and they think of Deere on their own.” [Id.]
173.

For the Schaben Confusion Survey, respondents were shown a picture of a piece of green

and yellow Schaben agricultural equipment with the word “SCHABEN” written on the
yellow tank. [Id. at 16; PX-699.]
174.

For the Ag Spray Confusion Survey, respondents were shown a picture of a piece of

green and yellow Ag Spray agricultural equipment with “AG SPRAY” written on the yellow
tank. [Tr. Vol. 2B at 15 (Poret Testimony); PX-700.]
175.

The control groups for both confusion surveys were shown a picture of a piece of yellow

and black crop care equipment with “CROP CARE” written on the yellow tank. [Tr. Vol. 2B
at 15 (Poret Testimony); PX-701.] Poret explained that, “by keeping the color yellow [in the
control image], which is one of the colors that Deere uses, that really . . . should maximize
how many people named Deere in the control, which then minimizes the confusion rate” to
make that number more accurate. [Tr. Vol. 2B at 17 (Poret Testimony).] “The control group
is taking the rate of people who named Deere when shown a piece of equipment that does not
have the Deere color scheme, and it’s subtracting that entire percentage” to obtain the net
percentage. [Id. at 25.]
176.

All three photos “were meant to represent what a crop farmer might see in the field in

use.” [Id. at 16.]

45

177.

Poret testified that the images shown to the respondents purposely displayed the logo of

the Schaben and Ag Spray equipment because he “wanted to make sure that the respondents
actually did get a chance to see the name Schaben or Ag Spray as prominently on the
equipment as they could.” [Id. at 16.]
178.

For both surveys, respondents were asked multiple questions, including who they

believed made the equipment and, if they had an opinion, why, whether they believed that the
equipment was approved or sponsored by any other company, and if so, why, and whether
they thought that any company that makes the equipment is affiliated with any other
company, and if so, why. [Id. at 18.] Respondents were told that if they did not have an
opinion, they should not guess. [Id. at 17.] The questions were “completely open-ended”
rather than providing multiple choice answers or a list of several answer choices. [Id. at 18.]
179.

The Schaben Confusion Survey resulted in a net confusion level of 22.0% who believed

the equipment was made by, approved by, or affiliated with Deere. [Id. at 20; see also PD-4
at 4.]
180.

The Ag Spray Confusion Survey resulted in a net confusion level of 39.0% who believed

the equipment was made by, approved by, or affiliated with Deere. [Tr. Vol. 2B at 20; see
also PD-4 at 4.]
181.

At trial, FIMCO adduced testimony from its opinion witnesses regarding the typical

gender of purchasers of the large agricultural equipment at issue in this litigation. All four of
these witnesses testified that, nearly every time, the purchaser of such equipment is male.
[See Tr. Vol. 5A at 30–31 (Kessler Testimony); Tr. Vol. 5A at 71 (Schwarz Testimony); Tr.
Vol. 5A at 109 (Yeazel Testimony); Tr. Vol. 5B at 20–21 (Perkins Testimony).] As far as the
Court can tell, this is an attempt to discredit the strength of Poret’s Schaben and Ag Spray

46

Confusion surveys, which did not limit survey respondents to only males. The Court will
discuss the effect, if any, that this factor has on the probative value of Poret’s survey below
in making its conclusions of law.
182.

In sum, the Court finds that the Schaben and Ag Spray Confusion surveys were

conducted reliably and are entitled to weight, and therefore provide evidence in support of
Deere’s state and federal trademark infringement claims and its federal false designation of
origin and unfair competition claim.
(2) Dilution Expert
183.

Poret also testified about trademark dilution. [See Tr. Vol. 2B at 25–34 (Poret

Testimony).]
184.

In support of its federal trademark dilution claim, Deere submitted Poret’s two dilution

surveys, a 2014 Schaben Dilution Survey and a 2016 Ag Spray Dilution Survey. [Id. at 25.]
185.

Poret conducted the Dilution Surveys using nearly identical methodologies as the

Confusion Surveys. Though he surveyed different individual people, he used the same
universe of crop farmers who actually work with agricultural sprayers and applicators. [Id.]
Poret again surveyed 100 individuals for the 2014 Schaben Dilution Survey and 200
individuals for the 2016 Ag Spray Dilution Survey. [Id. at 26.]
186.

Poret used the same three photographs for the Dilution Surveys as he used for the

Confusion Surveys. [Id. at 27; PX-699; PX-700; PX-701.] For the Schaben Dilution Survey,
Poret used two different pictures, one of a Schaben green and yellow trailed sprayer, [PX699], and one of a CropCare yellow and black trailed sprayer for the control group, [PX701.] For the Ag Spray Dilution Survey, Poret again used two pictures, one of an Ag Spray

47

green and yellow trailed liquid nutrient applicator, [PX-700], and the same CropCare yellow
and black trailed sprayer for the control group, [PX-701.]
187.

Poret explained how the Dilution Surveys were conducted as follows: “each respondent

saw only one of these pictures. They were given the same instructions as in the confusion
survey about not guessing. And if they don't have an opinion, they should say so. They were
asked different questions going to the issue of association. So they were asked whether any
companies came to their mind when they were looking at this. And if so, what companies and
what made that come to their mind. So in the case of dilution, we're seeing what percentage
of people think of Deere when they see this equipment.” [Tr. Vol. 2B at 27–28 (Poret
Testimony).]
188.

As with the Confusion Surveys, participants in the Dilution Surveys were not given a list

of answer choices, but rather were provided with empty spaces to fill in whatever company
came to mind. [Id. at 28.] “Deere was never mentioned to them or shown to them.” [Id.]
189.

Also like the Confusion Surveys, the percentage of respondents in the control group for

each survey who identified Deere when viewing the CropCare equipment, which has a
yellow and black color scheme, was subtracted from the percentage of respondents who
named Deere when viewing the green and yellow Schaben or Ag Spray equipment in each
survey. The resulting percentage was the net percentage for each survey. [Id. at 29.]
190.

The Schaben Dilution Survey resulted in a net of 38% of respondents who answered “that

Deere came to mind when they were viewing the Schaben equipment.” [Id.]
191.

The Ag Spray Dilution Survey resulted in a net of 43% of respondents who answered that

Deere came to mind when they viewed the Ag Spray equipment. [Id.]

48

192.

In sum, the Court is satisfied that the Schaben and Ag Spray Dilution surveys were

conducted reliably and are entitled to weight, and therefore provide strong evidence in
support of a finding that crop farmers associate the green and yellow color scheme on
agricultural equipment with Deere.
(3) Fame Survey
193.

Poret also testified about another survey he performed, which was designed to measure

the “fame” of Deere’s use of green and yellow colors on agricultural equipment. This survey
was conducted between May 6, 2016 and May 19, 2016. [Id. at 35.]
194.

For the Fame Survey, Poret surveyed a total of 400 people, with 200 in the test group and

200 in the control group. [Id. at 31.] For this survey, Poret surveyed “members of the general
public, a representative sample of general consumers.” [Id. at 32.] Poret explained that he
surveyed individuals of different genders and different geographic locations “because fame is
supposed to be measured among the general consuming public, not any particular niche
where the product might be more well-known.” [Id. at 32–33.] Accordingly, Poret surveyed
“a nationally representative geographic sample, so it would include people from all over the
place even if farming is not as big there.” [Id. at 33.]
195.

Poret used a total of four images in the Fame Survey. [Id.] These images were of an

orange vacuum cleaner, [PX-702], a navy and red striped women’s shirt, [PX-703], a green
and yellow John Deere agricultural tractor, [PX-704], and an orange agricultural tractor, [PX705.] All images had all brand names and logos removed from the products featured therein.
Specifically, the John Deere tractor did not include the name “John Deere” or the leaping
deer logo. [Tr. Vol. 2B at 33 (Poret Testimony).]

49

196.

Respondents in the test group were shown the images of the green and yellow tractor, the

shirt, and the vacuum cleaner. [Id.] Respondents in the control group were shown the images
of the orange tractor, the shirt, and the vacuum cleaner. [Id.] The respondents in both groups
were then asked about each of the three items, specifically, about whether they recognized
the items and whether they held a belief about what company or brand the item came from.
[Id.]
197.

Poret explained that he used the images of the shirt and vacuum cleaner along with the

images of the tractors “to not have the tractor stand out as the focus of the survey so it doesn't
get undue attention. The respondents don't have any reason to think the tractor is any more
important than any of the other items, and they don't feel as compelled to try to come up with
a company or brand name.” [Id. at 34.]
198.

After subtracting out the 2% noise rate from the control group, the Fame Survey resulted

in a net of 74% of respondents who identified John Deere as the brand or maker of the green
and yellow tractor. [Id.]
199.

FIMCO argues that Poret’s survey used flawed methods by attempting to measure the

fame of green and yellow as used on a John Deere tractor as opposed to the fame of green
and yellow as used on a John Deere sprayer or applicator. [See Tr. Vol. 2B at 40–45; DN 338
at 21–23.] The Court will address the effect of this critique below in its analysis of the fame
of Deere’s mark.
M. Fact Witnesses
200.

Both parties called witnesses who sell or have sold the agricultural equipment at issue in

this case to testify about their experiences selling green and yellow agricultural equipment to
farmers.

50

(1) Deere’s Fact Witnesses Regarding Agricultural Sales
1. Greg Thompson
201.

Greg Thompson is the store lead at an agricultural sales company called Heritage Tractor

in Lawrence, Kansas. [Tr. Vol. 2A at 67 (Thompson Testimony).] Heritage Tractor is “a turf,
construction, and agricultural dealership specializing in John Deere sales.” [Id.] It has nine
locations throughout eastern Kansas and western Missouri. [Id. at 68–69.]
202.

Thompson works with customers who are contemplating purchasing agricultural

equipment at Heritage Tractor. [Id. at 69.] Thompson testified that, with regard to customer
knowledge, “[w]e’ve got guys that can afford anything and know very little about anything,
and we’ve got guys that can just barely get something financed but know something about
everything.” [Id. at 70.] Thompson stated that he works with customers who are very
knowledgeable about all agricultural brands and types of equipment as well as customers
who have very little knowledge about the range of brands and types of equipment. [Id.]
Thompson testified that there is “[a] huge range” of knowledge among customers regarding
agricultural brands and products. [Id.]
203.

Heritage Tractor sells several types of Deere agricultural products, including, for

example, tractors, haying machines, planters, sprayers, and nutrient applicators. [Id. at 71.]
Heritage Tractor also sells other brands, including Land Pride, Bush Hog, KUHN, and Ag
Spray, a brand of FIMCO. [Id. at 71–72.] In the past, Heritage Tractor also sold Schaben, a
former brand of FIMCO. [Id. at 72.]
204.

Thompson testified that, since he has been at Heritage Tractor beginning in 2011,

customers have commented to him that the colors of Ag Spray and Schaben are “similar to or
the same as” Deere’s colors and that they “look like John Deere equipment.” [Id. at 73.]

51

Additionally, Thompson testified that customers have commented that they want to match
their trailed agricultural equipment to the color of their tractors. [Id. at 74.] Accordingly to
Thompson, customers say things like “’Does it come in Deere colors?’ ‘Does it match my
John Deere tractor?’ ‘Does it come in green and yellow?’ I mean, it’s expressed in multiple
ways.” [Id. at 75.]
205.

With regard to confusion, Thompson stated that, when he began working at Heritage

Tractor in 2011, when assisting customers, he “would go and grab two brochures off our
shelf . . . A lot of them sit there side by side. So I’d grab the Schaben brochure, John Deere
brochure, and I’d hand them to customers, and I’d have them ask, ‘Hey, so are those both
John Deere?’” [Id. at 76.] Thompson stated that he would reply, “Well, that says ‘Schaben’ at
the top,” and customers would reply “Okay. Is it made by John Deere?” [Id.] Thompson
testified that he “remember[s] having to go to [his] manager and say, ‘So what’s the situation
here?’ And he explained to me that Schaben was a separate company and we order it from a
separate place, and I was able to clear it up just fine.” [Id.]
206.

Next, Thompson testified about a second instance of confusion that occurred “[a] couple

years ago,” when a customer, MMP Farms, who owned an 8300 John Deere tractor, sought
to trade in its Blu-Jet nutrient applicator. [Id.] Thompson testified that he brought the
customer brochures for both John Deere and Schaben agricultural products, and the customer
commented, “So are they both John Deere, or are they just -- what are these?” [Id.]
Thompson stated that he replied, “This is Schaben. We order this from a different company.”
[Id.] Thompson testified that the customer then replied “Well, it’s nice they both match my
8300 [tractor].” [Id.]

52

207.

Thompson also testified about a third encounter involving alleged confusion. Thompson

explained that, while in his office near the showroom, a customer came in and said, “Hey,
can you tell me about those John Deere three-point sprayers over there?” [Id. at 77.] Because
Thompson knew that they did not have any John Deere three-point sprayers in the showroom
and had none in stock, he walked out to see what equipment the customer was referencing.
[Id.] Thompson testified that it turned out the customer was in fact talking about an Ag
Sprayer three-point sprayer rather than a Deere three-point sprayer. [Id.] Thompson
additionally testified that other walk-in customers have made similar comments and
estimated that this has happened approximately 40 times. [Id.] Thompson estimated that
about 35 out of those 40 were “active in farming.” [Id. at 78.]
208.

Thompson testified that a new self-propelled agricultural sprayer generally does not

directly compete with a new trailed agricultural sprayer. [Id. at 82.] Specifically, Thompson
agreed that the price of a new Deere self-propelled sprayer ranges from approximately
$170,000 to $500,000, while a new Ag Sprayer trailed sprayer ranges from approximately
$20,000 to $60,000. [Id. at 81–82.]
(2) FIMCO’s Fact Witnesses Regarding Agricultural Sales12
1. Albert Kessler
209.

Albert Kessler is the vice-president of the precision agriculture department at Stutsman,

Inc. in Hills, Iowa. [Tr. Vol. 5A at 10 (Kessler Testimony).]
210.

Kessler testified that “[m]ost of the farmers who come in to buy equipment from me have

done a lot of search -- searching around, try to find out the best product for accomplishing

12

Initially, FIMCO titled its witness disclosures for Kessler, Schwarz, Yeazel, and Perkins, as “Disclosure of
Opinion Testimony (Whether Lay or Expert).” At trial, Deere objected to the Court considering these witnesses as
expert witnesses, but stated that it had no problem with the witnesses testifying as to their experiences, perceptions,
and opinions. [Tr. Vol. 5A at 7–9.] FIMCO indicated that it did not have a problem with its witnesses being
considered lay witnesses. [Id. at 9.] Accordingly, the Court will consider them as such.

53

their goal that they're farming with. And -- and they ask a lot of – different farmers, they -they look on the web page to try to find information out to do the best they can buying the
best piece of equipment.” [Id. at 22–23.] He further testified that most shoppers he has
encountered are “experienced farmers” and that “they’re generally knowledgeable about the
equipment and the functions of the equipment.” [Id. at 23.] On the other hand, Kessler
acknowledged “that some farmers know more about certain agricultural equipment than
others,” and therefore that there is “a range of knowledge about the specifications, the
brands, and all aspects of different farming equipment among farmers.” [Id. at 39–40.]
211.

Moreover, Kessler agreed that the frequency with which farmers purchase sprayers and

applicators also varies. Kessler stated that “[i]t could be every year. It could be 20 years. It
ranges.” [Id. at 40.]
212.

Kessler further testified that, in the used market for trailed agricultural equipment today,

the predominant colors of such equipment are “[b]y far, green and yellow.” [Id. at 26.]
Additionally, Kessler testified that he does not solely associate the colors green and yellow
with John Deere. [Id.] On cross-examination, Kessler agreed that what he meant by this
statement was that “other companies use those colors on their equipment.” [Id. at 32.]
213.

With regard to confusion, Kessler testified that, in his experience interacting with

customers and prospective customers, he had never encountered individuals who told him
they were “confused as to the manufacturer of green and yellow trailed ag equipment.” [Id. at
27, 38–39.] However, Kessler also testified that, if a farmer saw a piece of green and yellow
agricultural equipment in a field from a distance, “[i]f they did not see the name of it, they
wouldn’t know” the brand. [Id. at 45.] But Kessler opined that if a farmer saw a green and
yellow trailed agricultural sprayer in a field from a distance, farmers could not think the

54

equipment was manufactured by Deere because Deere has “never made a pull-type sprayer,”
and most “farmers are smart enough to know that there is no such thing.” [Id. at 50–52.]
214.

Kessler additionally testified as to the differences between self-propelled agricultural

sprayers, which Deere sells, and trailed agricultural sprayers, which Deere does not sell. [Id.
at 27–28.] Specifically, Kessler explained that a self-propelled sprayer costs an average of
approximately $300,000, while a trailed sprayer costs an average of $50,000. [Id. at 28, 35.]
Additionally, as the names suggest, self-propelled sprayers do not require a tractor to operate,
while trailed sprayers do require a tractor. [Id. at 28, 36.] In other words, Kessler agreed that
“a farmer who's considering purchasing a trailed sprayer or trailed applicator is always a
farmer who either has purchased or is going to purchase a tractor.” [Id. at 36.]
215.

Finally, Kessler testified that, if two pieces of equipment, one green and yellow and one

green and black, both meet a prospective purchasers criteria (including price, quality, and
warranty), in his experience a customer with a Deere tractor would desire to buy the piece of
equipment that would match their Deere tractor. In other words, Kessler opined that “[m]ost
farmers . . . definitely want to match,” and would therefore likely purchase the green and
yellow piece of equipment. [Id. at 28–29.] Kessler agreed that the reason a “hypothetical
consumer . . . who cares about and wants those green and yellow colors [wants them] . . .
because those are the colors they identify with their Deere tractor[].” [Id. at 48.]
2. Mark Schwarz
216.

Mark Schwarz is a regional vice-president at FIMCO. He oversees six locations primarily

in the western United States. [Tr. Vol. 5A at 53–54 (Schwarz Testimony).]
217.

Schwarz testified that farmers “do a great deal of homework in the purchasing process.

They start out primarily looking for whether it's a sprayer applicator. There's a lot of research

55

to do as far as the size of sprayer from the tank size to the boom size to the tire size to the
spacing, the row spacing they farm, the kind of products they're going to put down. And it's - it's an important piece of equipment to their farm. It takes care of their crops through the
whole year and protects they're livelihood, so they do a great amount of research on what
they're going to buy before they buy it.” [Id. at 62.]
218.

Schwarz stated that the colors green and yellow are “not at all” solely associated with

Deere. Rather, Schwarz stated that “[i]f you’ve attended farm shows in the past and you’ve
walked and attended a farm show, you can walk down the aisles and see plenty of green and
yellow equipment in the past.” [Id. at 64–65.]
219.

Schwarz, like Kessler, testified that, in the used market for trailed agricultural equipment

today, the most prominent colors of equipment are green and yellow. [Id. at 65.]
220.

With regard to confusion, Schwarz stated that he has “never experienced confusion in the

marketplace. The farmers that I've dealt with are extremely knowledgeable individuals, and
they -- they're very familiar that in our product line, John Deere has not built a pull-type
sprayer, so I've never seen any confusion.” [Id. at 67.] Schwarz also testified that he had not
observed any confusion with regard to trailed liquid nutrient applicators. [Id.]
221.

Schwarz opined that self-propelled sprayers do not compete directly with trailed sprayers.

[Id.] Rather, according to Schwarz, self-propelled sprayers cost anywhere between $300,000
and $400,000, while trailed sprayers cost less than $100,000. [Id.]
222.

Schwarz testified that, all other factors (including price, quality, service, and relationship)

being equal, if a farmer with a Deere tractor could choose between a green and yellow or
black and white piece of trailed agricultural equipment, the farmer is “going to acquire the
piece of equipment that matches the tractor they’re pulling it with, so it would be green and

56

yellow.” [Id.] When asked why this was, Schwarz replied “[b]ecause they want the
equipment to complement it. As they go to the field, they like to look good.” [Id. at 67–68.]
223.

Like Kessler, Schwarz testified that he does not solely associate green and yellow colors

on agricultural equipment with Deere because “[t]here’s many other manufacturers that have
and continue to manufacture green and yellow pulled equipment.” [Id. at 69–70.]
224.

According to Schwarz, with regard to frequency of purchasing, “[s]ome farmers may

trade every year, every couple years. Some farmer[s] may trade them every five years or ten
years. It varies depending on the customer.” [Id. at 78.]
225.

Schwarz stated that FIMCO “sell[s] primarily green and yellow because primarily most

of the customers have green and yellow tractors, and they want to match their tractors.” [Id.
at 79.]
226.

Schwarz opined that when farmers see green and yellow trailed agricultural equipment,

farmers “may think of Deere,” however “I think they’re going to think of a lot of other
people as well. If it’s a disc, they may think of Deere. If it’s a sprayer, an applicator, I think
primarily they’re going to think of many other manufacturers before Deere.” [Id. at 82.]
227.

Schwarz further testified that, while a farmer who observes a green and yellow tractor in

a field would assume that tractor is sold by Deere, a farmer who observes a trailed sprayer in
a field “would assume it’s one of the ten [other] manufacturers . . . that manufacture[d]
trailed sprayers,” such as Bestway, Top Air, Sprayer Specialties, Summers, FAST, Hardi,
Minden Machine, Forest Manufacturing, or Big John. [Id. at 64, 86.] This is because “John
Deere has never manufactured a trailed sprayer.” [Id. at 87.]
228.

Schwarz likewise opined that a farmer would likely not assume that a green and yellow

trailed nutrient applicator was sold by John Deere, but rather “would state it was one of the

57

many manufacturers that [he] answered before.” [Id. at 88–89.] Schwarz explained that,
though a small percentage of farmers may think a trailed nutrient applicator was sold by
Deere, Deere has only been in that market for approximately two years, while other
manufacturers have been in the market “for some time.” [Id. at 89.]
3. Todd Yeazel
229.

Todd Yeazel is the National Sales Manager for Fertilizer Dealer Supply. [Tr. Vol. 5A at

91, 93–94 (Yeazel Testimony).] Fertilizer Dealer Supply “sells fertilizer equipment,
application equipment, [and] storage equipment for fertilizers and ag chemicals.” [Id. at 91.]
Fertilizer Dealer Supply does business primarily in the “corn belt” of the United States,
which includes, according to Yeazel, North Dakota, South Dakota, Nebraska, Missouri,
Iowa, Minnesota, Wisconsin, Illinois, Kentucky, Tennessee, Indiana, Michigan, Ohio, and to
some extent Pennsylvania. [Id. at 94–95.] Yeazel has experience selling both new and used
trailed agricultural equipment. [Id. at 95.]
230.

Yeazel testified that he typically attends, depending on the year, somewhere between six

and ten farm shows a year. [Id. at 97.] Fertilizer Dealer Supply maintains booths at farm
shows and Yeazel has been in charge of manning those booths in the past. [Id.] Yeazel
explained that “one of [his] jobs is to know what the competition is doing and what they’re
bringing, if they’re bringing something [new]. So [he] walked” the booths at the shows. [Id.
at 98.]
231.

Yeazel stated that, throughout his experience and observations in selling trailed

agricultural sprayers and applicators, the most prominent color that he has observed used on
those types of equipment is green and yellow; specifically, “yellow on the wheels and tank
and green on the frame.” [Id. at 99.]

58

232.

According to Yeazel, customers who are shopping for trailed agricultural equipment are

“very knowledgeable. It’s . . . a big piece of equipment for them to buy. It's an important job
it's going to do. It may have been a job that they hired done in the past, but now they're doing
it themselves. It’s . . . time sensitive, and it affects their bottom line. They are very serious
about it.” [Id. at 101.] Yeazel further noted that customers “come in with . . . with a lot of
information on a lot of other people’s equipment.” [Id. at 102.] Additionally, Yeazel
explained that, in his experience, a customer’s decision to purchase trailed agricultural
equipment is “very planned. You know, planned out seasons ahead a lot of times. They start
talking seasons ahead before they buy it, in my opinion.” [Id.]
233.

However, Yeazel acknowledged, as did Kessler and Schwarz, that there is a range of

knowledge among farmers about agricultural equipment. [Id. at 120.]
234.

Yeazel also testified that several different short-line manufacturers have sold trailed

agricultural equipment with yellow wheels, yellow tanks, and green frames, and therefore
that he does not solely associate those colors with one specific manufacturer. [Id. at 103.]
235.

However, Yeazel agreed that if a customer called and requested a piece of trailed

agricultural equipment in “the John Deere colors,” he would know that the customer meant
bright green and bright yellow. [Id. at 130–131.]
236.

Yeazel further testified that he has never experienced a time when a customer confused a

piece of green and yellow trailed agricultural equipment as being manufactured by Deere
when it was not. [Id. at 104, 107.]
237.

Yeazel also opined that a self-propelled agricultural sprayer does not compete directly

with a trailed agricultural sprayer because the two types of equipment represent “[t]wo
different markets. Two different needs for the end-user. Two different business models.” [Id.]

59

Moreover, Yeazel explained that “you could be looking at a 30 or $50,000 trail[ed] sprayer
and a $150,000 self-propelled sprayer, and that’s on the low end of the self-propelleds.” [Id.
at 105.]
238.

Yeazel responded that a hypothetical customer who owns a John Deere tractor and has

the choice between a piece of trailed agricultural equipment that is green and yellow or a
piece that is red and black, provided that both meet his purchase criteria, “will pick the green
and yellow.” [Id. at 106.] This is because, according to Yeazel, the farmer “wants to match
up with his tractor.” [Id.]
239.

Yeazel also testified that manufactures also sell trailed agricultural equipment in red and

black to match the other prominent brand of tractors in the United States, manufactured by
Case International, which is red. [Id. at 107.] Yeazel agreed that this is because, in his
experience, companies sell trailed agricultural equipment to match a farmer’s tractor. [Id.]
4. Cindy Perkins
240.

Cindy Perkins co-owns and works at a company called Perkins Sales, Incorporated in

Missouri. [Tr. Vol. 5B at 3 (Perkins Testimony).] Perkins Sales is in the business of
agricultural equipment sales. [Id.] Perkins sales is located in Missouri, but sells to customers
primarily in Arkansas, Louisiana, Mississippi, and Florida. [Id. at 7.]
241.

Perkins testified that Perkins Sales has a booth at approximately five farm shows a year.

[Id. at 7.] And before Perkins started attending farm shows for her business, she attended at
least one farm show a year as a farmer since approximately 1980 or 1981. [Id. at 8.]
242.

Perkins testified that, in her experience selling various brands of trailed agricultural

equipment, “[m]ost of the [brands] that [Perkins Sales] sell[s], they will offer them either in
green and yellow and red and gray or red and white and blue. [Id. at 12.] Perkins further

60

testified that the most common color of trailed agricultural equipment that she sells is green
and yellow. [Id.]
243.

With regard to customer knowledge, Perkins testified that customers are “very careful

about, you know, what they buy, the features they have, how accurate it is. They will ask me
questions . . . They want brochures. They want me to look something up on the internet for
them if they . . . aren’t very internet savvy. But most of our customers are pretty internet
savvy . . . .” [Id. at 13.] Oftentimes, according to Perkins, customers will come in to look at a
piece of equipment that they do not plan to purchase until the next year. [Id.] “So they do
their homework. This is something they are going to base their livelihood on, so it’s not
something that they do lightly. And they’re going to go out and they’re going to apply
hundreds of thousands of dollars worth of chemical or fertilizer to fields that are going to
affect what comes up at the end of the year, so they definitely -- you know, they take great
care in finding out even -- they’ll get on blogs and, you know, talk to other farmers and make
sure that what they’re getting is exactly what they want and going to do the job they expect it
to do.” [Id. at 14.]
244.

Perkins also testified that farmers may only purchase a sprayer or applicator every five to

ten years. [Id. at 26–27.]
245.

Perkins explained that her customers typically prefer to purchase trailed agricultural

equipment in green and yellow because, when “people have green and yellow tractors . . .
they kind of have almost . . . a fleet mentality. They like everything to look, you know, like
the same, match, and have – be complementing one another. As far as colors go, they like
everything to look the same.” [Id. at 15.]

61

246.

In response to the question of whether, in her experience at her store or at farm shows,

any customer or prospective customer ever confused a piece of trailed agricultural equipment
as being manufactured by Deere when it was not, Perkins replied “No. It’s never happened.”
[Id. at 15.]
247.

Perkins testified that, in the year leading up to her testimony in this case, she “queried

some people that [she] trust[s] that come in and just posed that question to them” about
whether they had ever confused a piece of Schaben or Ag Spray equipment as a piece of
Deere equipment, “[a]nd they absolutely agreed with [her], ‘No, I’ve never had that
confusion.’” [Id. at 26.]
248.

Perkins additionally opined that green and yellow colors are “not solely” associated with

Deere. She testified that “obviously John Deere has had that color, but, I mean, it’s been
something that has been available for as long as we’ve been selling equipment, you know.
Whenever they have a range of colors that are available, that’s always been included.” [Id. at
16.]
249.

Perkins, like Kessler, Schwarz, and Yeazel, testified that a hypothetical customer who

owns a John Deere tractor would choose a green and yellow piece of trailed agricultural
equipment “every time” over a red and white piece of equipment, provided that both pieces
meet the purchaser’s criteria in terms of price, features, capability, and warranty. [Id. at 16–
17.] Perkins explained that this is because the farmers “desire it to match their tractor.” [Id. at
17.] Conversely, Perkins testified that a farmer who has a Case IH tractor, which is red,
would “usually” want the red and white piece of trailed agricultural equipment to match their
Case IH tractor. [Id.]

62

250.

Perkins testified that a self-propelled agricultural sprayer and a trailed agricultural

sprayer are “[n]ot at all” in direct competition with each other. [Id. at 18.] This is because,
according to Perkins, “different farming practices require different equipment, and you don’t
have the same farming practices that you would use if you used a self-propelled against a
trailed ag.” [Id.] Moreover, Perkins stated that there is “[a] huge price difference” between
the two. [Id. at 19.] Specifically, “the self-propelleds are probably four times to five times
more than a trailed ag.” [Id.]
251.

However, Perkins also conceded that, though sprayers and applicators are different types

of equipment, they both perform the same fundamental function of “put[ting[ some type of
material, be that a liquid, a gas, or a solid-like fertilizer, onto crops.” [Id. at 25.]
V.

CONCLUSIONS OF LAW

1. Deere seeks injunctive relief for FIMCO’s alleged acts of trademark infringement, false
designation of origin and unfair competition, and trademark dilution in violation of federal
and Kentucky law.
2. FIMCO asserts the affirmative defenses of acquiescence and estoppel, as well as
counterclaims for a declaratory judgment finding that it has not violated any federal or state
trademark laws.
A. Trademark Infringement
3. Deere’s trademark infringement claims relate to FIMCO’s use of green and yellow colors on
its trailed nutrient applicators and agricultural sprayers.
4. “A party proves trademark infringement by showing (1) that it owns a trademark, (2) that the
infringer used the mark in commerce without authorization, and (3) that the use of the alleged
infringing trademark ‘is likely to cause confusion among consumers regarding the origin of

63

the goods offered by the parties.’” Coach, Inc. v. Goodfellow, 717 F.3d 498, 502 (6th Cir.
2013) (quoting Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 515 (6th Cir.
2007)).
5. To determine whether a likelihood of confusion exists, courts in the Sixth Circuit consider
eight factors, often referred to as the “Frisch’s factors.” Daddy’s Junky Music Stores, Inc. v.
Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997) (citing Frisch's
Restaurants, Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642, 648 (6th Cir. 1982) (“Frisch I”)).
6. Courts “assess each factor with respect to the relevant consumer market; potential buyers of
the “junior” product (here, [FIMCO’s green and yellow sprayers and applicators]) are the
relevant consumers.” Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 419
(6th Cir. 2012) (citing Leelanau Wine Cellars, 502 F.3d at 518).
7. The Frisch’s factors “imply no mathematical precision, but are simply a guide to help
determine whether confusion is likely.... The ultimate question remains whether the relevant
consumers are likely to believe that the products or services are affiliated in some way.”
Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F. Supp. 2d 671, 689–90 (W.D.
Ky. 2010) (Heyburn, J.), aff’d, 679 F.3d 410 (6th Cir. 2012) (quoting Daddy’s, 109 F.3d at
280).
8. The eight Frisch’s factors, and the Court’s analysis of each as applied to this case, are as
follows.
(1) Strength of the Senior Mark
9. The strength factor “focuses on the distinctiveness of a mark and its recognition among the
public.” Maker’s Mark, 679 F.3d at 419 (quoting Therma–Scan, Inc. v. Thermoscan, Inc.,
295 F.3d 623, 631 (6th Cir. 2002)). “The Sixth Circuit has noted that ‘[t]he stronger the

64

trademark, the more likely it is that encroachment on it will produce confusion.’” Maker’s
Mark, 703 F. Supp. 2d at 689–90 (quoting Champions Golf Club v. Champions Golf Club, 78
F.3d 1111, 1117 (6th Cir. 1996)).
10. Whether a mark is “strong” requires an evaluation of both 1) conceptual strength and 2)
commercial strength. Maker’s Mark, 679 F.3d at 419 (citing 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 11.83 (4th ed.)). Conceptual strength
refers to the “‘placement of the mark on the spectrum of marks,’ which encapsulates the
question of inherent distinctiveness.” Id. (citing 2 McCarthy, supra, at § 11.83). Commercial
strength refers to “the marketplace recognition value of the mark.” Id. (quoting 2 McCarthy,
supra, at § 11.83). “In other words, ‘[a] mark is strong if it is highly distinctive, i.e., if the
public readily accepts it as the hallmark of a particular source; it can become so because it is
unique, because it has been the subject of wide and intensive advertisement, or because of a
combination of both.’” Id. (quoting Homeowners Grp. v. Home Mktg. Specialists, Inc., 931
F.2d 1100, 1107 (6th Cir. 1991)).
11. Certainly, the green and yellow color scheme as it is used on John Deere tractors is a “strong
trademark[] in that the public readily accepts [it] as [a] hallmark[] of” John Deere.” Gen.
Motors Corp. v. Keystone Auto. Indus., Inc., 453 F.3d 351, 356 (6th Cir. 2006). The evidence
at trial wholly supports this conclusion. [See, e.g., Tr. Vol. 5A at 43 (Kessler Testimony)
(Agreeing that “any farmer . . . who sees a green and yellow tractor will think it’s from
Deere.”); Tr. Vol. 5A at 81 (Schwarz Testimony) (Agreeing that “a farmer who sees green
and yellow on a tractor is going to understand John Deere is the source, the maker of that
tractor.”); Tr. Vol. 5A at 121 (Yeazel Testimony) (Agreeing that he does not “know of any
other company that makes green and yellow tractors except Deere.”); Tr. Vol. 5B at 27

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(Perkins Testimony) (Agreeing that “it’s common knowledge that Deere makes green and
yellow tractors.”).]
12. However, the strength of the green and yellow color scheme as it is used on other John Deere
equipment, such as trailed nutrient applicators, is not as strong. True, due to the
incontestability of Deere’s trademarks for wheeled agricultural machines, [PX-2; PX-151],
and tractor-towed agricultural implements, [PX-3; PX-152], Deere’s trademarks on those
products “are presumed to be strong marks.” AutoZone, Inc. v. Tandy Corp., 373 F.3d 786,
794 (6th Cir. 2004). However, FIMCO “can rebut the presumption of . . . strength by proving
extensive third-party use of similar marks.” Id. (citing Data Concepts, Inc. v. Digital
Consulting, Inc., 150 F.3d 620, 625 (6th Cir.1998)). Specifically, the Sixth Circuit has
“recognize[d] that ‘extensive third-party uses of a trademark [may] substantially weaken the
strength of a mark.’” Maker’s Mark, 679 F.3d at 420 (quoting Homeowners, 931 F.2d at
1108; Herman Miller, Inc. v. Palazzetti Imps. & Exps., Inc., 270 F.3d 298, 317 (6th Cir.
2001)). FIMCO offered extensive evidence as to this point at trial. Specifically, FIMCO
showed that, throughout the years, several other short-line manufacturers have manufactured
trailed agricultural equipment in green and yellow.
13. For instance, Schwarz testified at trial that, when farmers see green and yellow trailed
agricultural equipment, they “may think of Deere,” however “I think they’re going to think of
a lot of other people as well. If it’s a disc, they may think of Deere. If it’s a sprayer, an
applicator, I think primarily they’re going to think of many other manufacturers before
Deere.” [Tr. Vol. 5A at 82 (Schwarz Testimony).] This is because there have “been many,
many companies over the past 20 years that [Schwarz has] been in the industry that have
manufactured green and yellow pull-type equipment.” [Id. at 89.] Schwarz further testified

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that if “you've walked and attended a farm show, you can walk down the aisles and see
plenty of green and yellow equipment in the past.” [Id. at 65; see also Tr. Vol. 5A at 32
(Kessler Testimony) (Agreeing that “other companies use those colors on their equipment.”);
Tr. Vol. 5A at 99 (Yeazel Testimony) (“[T]here was many [companies] over the years that
have produced either a sprayer or a side dresser or both with green and yellow.”).]
14. In the past, as many as 40 companies have used green and yellow on agricultural products.
Between the late 1980s and today, Deere sent communications to these companies requesting
that they cease using the green and yellow color combination. Today, all but 3 companies
have agreed to stop. [Tr. Vol. 1A at 63–64 (Myers Testimony)].
15. Due to other companies’ use of green and yellow in the past, Deere’s use of green and yellow
on its agricultural implements is not as strong an indicator of source as is the use of green and
yellow on its tractors. This is true despite the fact that, as of 2017, only three companies
continue to use it.
16. However, this does not mean that the green and yellow color scheme as used on Deere
agricultural implements has no strength or distinctiveness at all. On the contrary, Schwarz
testified that Deere remains among the companies that may come to mind when a farmer sees
a piece of green and yellow trailed agricultural equipment. Moreover, the Schaben and Ag
Spray Confusion and Dilution surveys, which the Court will address in greater detail below,
also tend to indicate that farmers think of Deere when shown a piece of trailed green and
yellow agricultural equipment. [See Tr. Vol. 2B at 20, (Poret Testimony); see also PD-4 at
4.]

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17. Overall, due to the extensive third-party use of green and yellow on trailed agricultural
equipment, the Court finds that this color scheme is likely not the “hallmark” of Deere.
Accordingly, this factor weighs in favor of FIMCO, though only slightly.
(2) Relatedness of the Goods or Services
18. The Sixth Circuit has explained that “[c]ases generally fit into one of three categories
regarding the relatedness of the goods and services of the parties. First, if the parties compete
directly by offering their goods or services, confusion is likely if the marks are sufficiently
similar; second, if the goods or services are somewhat related but not competitive, the
likelihood of confusion will turn on other factors; third, if the goods or services are totally
unrelated, confusion is unlikely. Daddy’s, 109 F.3d at 282 (citing Champions, 78 F.3d at
1118). Moreover, “goods ‘are ‘related’ not because they coexist in the same broad industry,
but are ‘related’ if the services are marketed and consumed such that buyers are likely to
believe that the services, similarly marked, come from the same source, or are somehow
connected with or sponsored by a common company.’” Id. at 282–83 (quoting Homeowners,
931 F.2d at 1109). “The question is, are the [goods or services] related so that they are likely
to be connected in the mind of a prospective purchaser?” Id. (quoting Homeowners, 931 F.2d
at 1109). Additionally, “courts must examine whether the products of the parties perform the
same function, concentrating on ‘whether consumers will be confused as to the origin of the
product.’” Id. (quoting Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988) (Wynn
Oil I)).
19. In this case, the evidence shows that the goods at issue are closely related. Broadly speaking,
both parties sell large agricultural sprayers and applicators. More specifically, with regard to

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trailed agricultural liquid nutrient applicators, which both Deere and FIMCO sell, the parties
are in direct competition.
20. With regard to agricultural sprayers, it is undisputed that Deere only sells self-propelled
agricultural sprayers in the United States, while FIMCO only sells trailed agricultural
sprayers in the United States. Although the parties do not sell the same type of sprayer, and
although there is typically a vast price difference between self-propelled and trailed sprayers,
both types of sprayers perform the same basic function; that is, applying some type of
substance to crops. See id. at 283 (quoting Wynn Oil I, 839 F.2d at 1187 (“holding that bulk
car wax and complete car washing service of one party and car care products of other party
offered consumers the fundamentally same thing: a clean car”)). As a result, the Court finds
that a significant overlap exists between goods sold by FIMCO and goods sold by Deere. See
id. (“The District Court found that, although plaintiff concentrates on selling used
instruments and defendant does not, the fact that both parties sell retail musical instruments
increases the likelihood of confusion. The overlap of the goods and services offered by both
parties, especially their emphasis on electronic instruments, does support the conclusion that
some potential consumers of one party could fulfill their needs by buying instead from the
other party.”) (internal citations omitted). Accordingly, the relatedness factor weighs in favor
of Deere.
(3) Similarity of the Marks
21. In analyzing whether senior and junior marks are similar, “courts must determine whether a
given mark would confuse the public when viewed alone, in order to account for the
possibility that sufficiently similar marks may confuse consumers who do not have both
marks before them but who may have a general, vague, or even hazy, impression or

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recollection of the other party’s mark.” Maker's Mark, 679 F.3d at 421 (citing Daddy's, 109
F.3d at 283). To that end, “courts must view marks in their entirety and focus on their overall
impressions, not individual features.” Daddy’s, 109 F.3d at 283 (citing Homeowners, 931
F.2d at 1109). The similarity factor is one “of considerable weight.” Id. (citing Champion’s
Golf Club, 78 F.3d at 1119).
22. FIMCO’s use of green and yellow on trailed sprayers and applicators is highly similar to
Deere’s use of green and yellow on self-propelled sprayers and trailed applicators. First,
FIMCO has stipulated to the facts that the green and yellow paint colors used by Deere and
FIMCO are “indistinguishable from each other to the naked eye” and “indistinguishable from
each other when appearing on equipment in the field.” [DN 164 at 1–2 (Stipulated Facts).]
23. Second, the placement of the green and yellow colors on the parties’ respective agricultural
equipment is also very similar. FIMCO’s sprayers and applicators predominantly feature
yellow tanks, yellow wheels, and green frames. [See, e.g., PX-301; PX-331.] Likewise,
Deere’s sprayers and applicators feature yellow tanks, yellow wheels, and green frames. [See,
e.g., PX-6; PX-7.]
24. FIMCO argues, however, that there are “many differences between the appearances of the
[parties’] products. [DN 338 at 9 (FIMCO’s Amended Proposed Findings of Fact and
Conclusions of Law).] Specifically, FIMCO argues that its equipment is “predominantly
yellow, with black, green and silver accent colors and a white sticker on the frame.” [Id.]
Additionally, FIMCO emphasizes that the “Ag Spray” brand is “prominently displayed in
conspicuous, distinctive black lettering, on the tank of all FIMCO prayers and applicator[s].
[Id.] Finally, FIMCO questioned Myers on cross examination about Deere’s use of some

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gray and stainless steel tanks (rather than yellow) on its self-propelled sprayers. [See Tr. Vol.
1A at 94–97 (Myers Testimony); DX 103; PX-269, p. 1; PX-267, p. 7.]
25. However, the Court’s task when analyzing this factor is to glean the “overall impressions” of
FIMCO’s products rather than focusing on “individual features.” Daddy’s, 109 F.3d at 283.
And while FIMCO products may contain some black and silver accents, the vast majority of
exhibits introduced at trial displaying FIMCO trailed agricultural sprayers and applicators in
color feature, most notably, bright green and bright yellow, with green used on the frame of
the equipment and yellow used on the wheels. [See, e.g., DX-58 (2004 Schaben Catalog
Cover); DX-59 (2005 Schaben Catalog Cover); DX-60 (2006 Schaben Catalog Cover); DX61 (2007 Schaben Catalog Cover); DX-62 (2008 Schaben Catalog Cover); DX-63 (2009
Schaben Catalog Cover); DX-64 (2010 Schaben Catalog Cover); DX-65 (2011 Schaben
Catalog and Parts Book Cover); DX-66 (2012 Schaben Catalog and Parts Book Cover); DX67 (2013 Schaben Catalog and Parts Book Cover); DX-69 (2010 Ag Spray Catalog and Parts
Book Cover); DX-70 (2011 Ag Spray Catalog and Parts Book Cover); DX-71 (2012 Ag
Spray Catalog and Parts Book Cover); DX-72 (2013 Ag Spray Catalog and Parts Book
Cover); DX-74 (2015 Ag Spray Catalog and Parts Book Cover); DX-75 (2016 Ag Spray
Catalog and Parts Book Cover).] As a result, when viewed alone, the overall impression of
Schaben and Ag Spray-branded FIMCO sprayers and applicators is of green and yellow
colors, despite the use of black accents and yellow tanks.
26. Moreover, though FIMCO equipment typically has the words “Ag Spray” or “Schaben”
printed on it, and though this may work to distinguish the products somewhat, the Court finds
that the presence of these brand names is not so significant or distinctive so as to make the
products “dissimilar” for purposes of this factor. Rather, the similarities between the two

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parties’ products remain strong despite the use of the brand labels. See Therma-Scan, Inc. v.
Thermoscan, Inc., 295 F.3d 623, 634 (6th Cir. 2002) (“Although the typeface and graphical
design of the trademarks differ, these contrasts relate to the marks’ “individual features”
rather than the “overall impressions” that the marks convey. These differences, therefore, do
not negate the high degree of similarity between the marks.” (internal citations omitted)).
Therefore, the similarity factor weighs strongly in favor of Deere.
(4) Evidence of Actual Confusion
27. “Evidence of actual confusion is undoubtedly the best evidence of likelihood of confusion.”
Daddy's, 109 F.3d at 284 (quoting Wynn Oil I, 839 F.2d at 1188). That being said, “it does
not follow that any type or quantum of such evidence is entitled to significant weight in the
determination. Where the parties have been doing business in the same area for some time
and where they have advertised extensively, isolated instances of actual confusion are not
conclusive or entitled to great weight in the determination.” Homeowners, 931 F.2d at 1110
(citations omitted). “Perhaps as important as the number of instances of confusion are the
kinds of persons confused and degree of confusion. ‘Short-lived confusion or confusion of
individuals casually acquainted with a business is worthy of little weight,’ while chronic
mistakes and serious confusion of actual customers are worthy of greater weight.” Id.
(quoting Safeway Stores, Inc. v. Safeway Disc. Drugs, Inc., 675 F.2d 1160, 1167 (11th Cir.
1982) (internal citation omitted)).
28. Vaughan testified that “[t]here was never any confusion . . . The farmer is probably the most
educated buyer of any piece of equipment, whether it’s a pickup truck or semi.” [Tr. Vol. 3B
at 61 (Vaughan Testimony).] Additionally FIMCO’s witnesses Kessler, Schwarz, Yeazel,
and Perkins all testified that, in their experience selling FIMCO-branded agricultural sprayers

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or applicators, they have never encountered a situation where a prospective customer
confused a FIMCO product as being manufactured or sold by Deere or who was confused
about the manufacturer of a piece of green and yellow equipment. [Tr. Vol. 5A at 27, 38–39.
(Kessler Testimony); Tr. Vol. 5A at 67 (Schwarz Testimony); Tr. Vol. 5A at 104, 107
(Yeazel Testimony); Tr. Vol. 5B at 15, 26 (Perkins Testimony).]
29. Two Deere witnesses, on the other hand, testified that they have experienced certain
instances of alleged confusion.
30. The first was Brian Myers, a program manager in pricing and incentives for John Deere. [Tr.
Vol. 1A at 28 (Myers Testimony).] Myers testified that, in April 2016, during a training
exercise at a John Deere dealership, a new member of Myer’s group by the name of Kirk
Ogden asked Myers whether an Ag Spray-branded product was a John Deere product. [Id. at
68. (Myers Testimony).] Myers testified that Ogden had worked at Deere “for a couple years
prior as a test engineer” and had a background in farming. [Id. at 68–69.] However, the Court
does not find that this anecdote provides strong evidence of actual confusion. Generally,
confusion on behalf of employees of the senior or junior users of the contested mark is not
relevant to the actual confusion assessment. See Progressive Distribution Servs., Inc. v.
United Parcel Serv., Inc., 856 F.3d 416, 434 (6th Cir. 2017) (“Progressive only points to an
incident of confusion involving a UPS employee, and not an actual or prospective customer
of Progressive’s services. This is significant because in a trademark infringement action, the
focus rests upon the likelihood of a consumer being confused by the two marks and not an
employee.”)
31. The second witness was Greg Thompson, who has experience selling both Deere products
and Schaben and Ag Spray-branded FIMCO products. [Tr. Vol. 2A at 67, 71–72 (Thompson

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Testimony).] Thompson testified that some customers, when looking at both a Schaben and a
Deere brochure for agricultural equipment, would ask whether both types of equipment were
made by John Deere, despite the fact that the Schaben brochures had the word “Schaben”
printed at the top. [Id. at 76.] Thompson recounted a specific instance in which a farmer who
owned a John Deere tractor and who was in the market for a new trailed liquid nutrient
applicator, when presented with both John Deere and Schaben brochures, asked whether both
types of equipment were Deere-branded. [Id.]
32. Thompson also testified that a customer once asked him to tell him about a John Deere threepoint sprayer that was displayed in the Heritage Tractor showroom, but which was in fact an
Ag Spray three-point sprayer. [Id. at 77.] Thompson testified that “at least 40” other walk-in
customers have also made similar comments to him during his time at Heritage Tractor and
estimated that, of those, approximately 35 farmers who were “active” in farming made such
comments. [Id. at 77–78.]
33. This anecdotal evidence regarding instances of confusion from Thompson provides some
support for a finding of actual confusion. “It is significant that in [many of the] instances, the
confused individuals were knowledgeable about [the agricultural industry] . . . but
nonetheless were unclear about which [piece of equipment] was which.” Champions, 78 F.3d
at 1120. However, “[o]n the other hand, [such few] incidents is not a considerable quantum
of evidence of actual confusion, and minimal or isolated instances of actual confusion are,
obviously, less probative than a showing of substantial actual confusion.” Id.
34. More probative of actual confusion, however, are the confusion surveys conducted by Poret,
Deere’s survey expert. Those surveys reflect that crop farmers who actually work with
sprayers and applicators do experience confusion with regard to the source of FIMCO’s

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Schaben and Ag Spray products. The Schaben Confusion Survey yielded a net confusion rate
of 22.0% who believed the pictured Schaben equipment was made by, approved by, or
affiliated with Deere. [Tr. Vol. 2B at 20 (Poret Testimony); see also PD-4 at 4.]
35. The Ag Spray Confusion Survey yielded a net confusion rate of 39.0% who believed the Ag
Spray equipment was made by, approved by, or affiliated with Deere. [Tr. Vol. 2B at 20
(Poret Testimony); see also PD-4 at 4.]
36. These rates are within the range that courts and commentators have found to support a
finding of actual or likely confusion. See 6 McCarthy, supra, at § 32:187 (“[T]he key figure
is ‘net confusion’; the difference between the raw confusion percent and the control
confusion percent.”); 6 McCarthy, supra, at § 32:188 (“Generally, figures in the range of
25% to 50% have been viewed as solid support for a finding of a likelihood of confusion.”)
(collecting cases).
37. See also First Nat. Bank in Sioux Falls v. First Nat. Bank S. Dakota, 679 F.3d 763, 771 (8th
Cir. 2012) (“FNB South Dakota’s own expert found that the percentage of consumers likely
to be confused was thirteen percent, and we have held that even eleven percent confusion is
‘not an insignificant percentage.’ As a result, the district court did not clearly err in finding
that the survey evidence demonstrates a likelihood of confusion.” (internal citations omitted);
Gateway, Inc. v. Companion Prod., Inc., 384 F.3d 503, 510 (8th Cir. 2004)
(“[A]pproximately 39% of the people surveyed erroneously believed that Gateway
manufactured or sponsored Cody Cow. This confusion rate substantially exceeds a rate we
have previously found sufficient evidence of actual confusion.”); J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 1463 (Fed. Cir. 1991) (“McDonald's presented consumer
survey evidence in which 30% of the respondents stated that they thought a product marked

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McPRETZEL originated with McDonald’s.”); U.S. Polo Ass'n, Inc. v. PRL USA Holdings,
Inc., 800 F. Supp. 2d 515, 532 (S.D.N.Y. 2011), aff'd, 511 F. App’x 81 (2d Cir. 2013) (“The
[net] confusion levels [of 27.8% and 22.5%] ascertained by the Mantis surveys have been
accepted as indicative of likelihood of confusion.”); Warner Bros. Entm't v. Glob. Asylum,
Inc., No. CV 12-9547 PSG CWX, 2012 WL 6951315, at *10 (C.D. Cal. Dec. 10, 2012), aff'd
sub nom. Warner Bros. Entm't v. Glob. Asylum, Inc., 544 F. App'x 683 (9th Cir. 2013), and
aff'd sub nom. Warner Bros. Entm't v. Glob. Asylum, Inc., 544 F. App'x 683 (9th Cir. 2013)
(“Generally, confusion levels of 25 to 50 percent provide “solid support” for a finding of
likelihood of confusion.”); Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766, 776
(S.D. Tex. 2005), aff'd, 205 F. App’x 289 (5th Cir. 2006) (Noting that “25% of consumers
believed that ‘Star Bock’ beer was affiliated with Starbucks” and holding that percentage was
sufficient “to show a significant level of actual confusion.”).
38. On the contrary, courts have rejected survey evidence that falls substantially below that
range. See Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136, 1149 (10th Cir. 2013) (“Net
confusion rates of 6.5% and negative 0.5% do not create a genuine factual issue of likelihood
of confusion.”); CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 268 (4th Cir.
2006) (“[T]he survey only shows a confusion rate of 2 percent, hardly a sufficient showing of
actual confusion.”); Diana Princess of Wales Mem'l Fund v. Franklin Mint Co., 216 F.3d
1082 (9th Cir. 1999), as amended on denial of reh'g (Feb. 24, 2000) (“Franklin's telephone
survey evidence showed that only 6.9% of respondents thought money was being donated to
the Fund. This percentage weighs against a finding of confusion.”).
39. FIMCO challenges the methodology of Poret’s confusion surveys in multiple ways. First,
FIMCO questioned Poret on cross-examination about an error in one of the survey questions.

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Specifically, a question in the Ag Spray Confusion survey mistakenly referred to the piece of
Ag Spray equipment that was shown to respondents as a “sprayer” when, in fact, the piece of
equipment shown was an applicator. [PX-694, p. 6, 8; Tr. Vol. 2B at 48–50, 55–56 (Poret
Testimony).] FIMCO’s counsel asked Poret whether any respondents pointed out this error in
the answer box following the questions about this “sprayer.” [Tr. Vol. 2B at 51 (Poret
Testimony).] Poret could not recall during cross-examination, however, on redirect
examination, Deere’s counsel pointed Poret’s attention to one response that stated “There are
many sprayers made like this, but this is not a sprayer. It's post liquid fertilizer applicator that
puts liquid fertilizer between rows.” [Id. at 55–56 (quoting PX-695).] Overall, the Court does
not find this error to substantially weaken the probative value of the Ag Spray Confusion
survey. Even the respondent who identified the error in his or her response noted that, though
the equipment was not a sprayer, “[t]here are many sprayers made like this.” [See PX-695.]
In other words, the essence of the survey was not compromised due to this small error. The
equipment shown was still a piece of Ag Spray equipment, and a net of 39% of respondents
believed the equipment was made by or affiliated with Deere. Though the type of Ag Spray
equipment was stated incorrectly in the prompt, the outcome remained the same or
substantially the same with regard to the resulting confusion.13
40. Second, FIMCO pointed out that Poret’s surveys were “not limited to persons who would
consider purchasing a piece of ag equipment” or who “were capable financially of such a
purchase.” [Tr. Vol. 2B at 51 (Poret Testimony).] It is true that surveys conducted in the

13

 FIMCO objected to the admissibility of PX-694 and PX-695 on grounds of hearsay, lack of foundation, and Rule
403. [DN 282 at 32.] The Court will overrule these objections. PX-694 contains screenshots of the surveys Poret
conducted and PX-695 contain Poret’s raw data files. Poret testified reliably as to these exhibits at trial, and, having
designed the surveys, has personal knowledge of their contents. [See Tr. Vol. 2B at 36–37, 48–50, 55–56 (Poret
Testimony).] Moreover, the Court already ruled, in an earlier opinion in this litigation, that, “since at least 1951 the
cases are now unanimous that evidence of the state of mind of persons surveyed is not inadmissible as hearsay.” See
6 McCarthy, supra, at § 32:168. [See DN 161.] Accordingly, the Court does not find these exhibits to be excludable
on hearsay grounds.

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trademark infringement context should attempt to “limit the respondent population to those
persons likely to purchase defendant’s products.” Leelanau Wine Cellars, 502 F.3d at 518.
However, leading commentators have recognized that “no survey can perfectly reproduce the
actual purchasing decision in which the customer puts his or her money behind the decision.”
6 McCarthy, supra, at § 32:163.
41. In this case, the evidence demonstrates that, due to the high cost and longevity of the
agricultural equipment at issue, the frequency with which farmers purchase trailed
agricultural equipment may vary greatly. [See Tr. Vol. 4A at 28 (Clay Roll Testimony) (“We
have customers who will trade with us every year. We also have customers that maybe trade
once every ten years and everywhere in between.”); Tr. Vol. 5A at 40 (Kessler Testimony)
(Explaining that the frequency with which a farmer shops for a sprayer or applicator “could
be every year. It could be 20 years. It ranges.”] As a result, obtaining a sample size of
farmers currently in the market for a FIMCO-branded sprayer or applicator to survey would
have been very difficult or nearly impossible.
42. Here, Poret surveyed individuals who stated that they were crop farmers who work with
sprayers and applicators. [Tr. Vol. 2B at 10 (Poret Testimony).] Though surely not all of
these individuals were potential purchasers of FIMCO trailed agricultural equipment, the fact
that those individuals work and are therefore familiar with sprayers and applicators
nonetheless makes their responses relevant in the Court’s view. Therefore, although the
universe of respondents surveyed may limit the probative value of the confusion surveys
somewhat, the Court finds that they are still entitled to some weight in the actual confusion
analysis. See Leelanau Wine Cellars, 502 F.3d at 518 (“Where a survey presented on the

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issue of actual confusion reflects methodological errors, a court may choose to limit the
importance it accords the study in its likelihood of confusion analysis.”).
43. Moreover, the Sixth Circuit has specifically cautioned district courts to “bear[] in mind that it
is not determinative of the matter that the . . . incidents of actual confusion did not relate to
direct consumers of [the defendant’s] services.” Champions, 78 F.3d at 1120. Accordingly,
while the group of respondents Poret surveyed may slightly limit the weight the Court must
give to the confusion surveys, it does so only minimally.
44. Third, FIMCO adduced evidence at trial from Kessler, Schwarz, Yeazel, and Perkins that, in
their experience, the decision-makers regarding the purchase of agricultural equipment are
nearly always male. [See, e.g., Tr. Vol. 5B at 20–21 (Perkins Testimony) (Explaining that the
gender of the person who makes the purchasing decision for an agricultural sprayer is male
“99.9 percent of the time.”)] It appears FIMCO presented this testimony in an attempt to
further limit the weight the Court should give to Poret’s surveys, which did not narrow the
survey respondents on the basis of gender. However, the Court does not believe that the
failure to narrow respondents based on gender negatively affects the probative value of the
Surveys in any significant way.
45. On the whole, the Court finds that the Schaben and Ag Spray confusion surveys provide at
least some evidence of actual confusion, and therefore finds that this factor, too, weighs in
Deere’s favor.
(5) Marketing Channels Used
46. This “factor requires a court to consider the similarities or differences between the
predominant customers of the parties’ respective goods or services.” Daddy’s, 109 F.3d at

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285. Additionally, “a court must determine whether the marketing approaches employed by
each party resemble each other.” Id.
47. The parties market their products using similar approaches that target the same general types
of customers: farmers and farming operations. [Tr. Vol. 1A at 47 (Myers Testimony); Tr.
Vol. 5A at 37 (Kessler Testimony).]
48. Deere does not sell its products directly to end-users; rather, it sells its equipment only
through authorized John Deere dealers which, in turn, sell to end-users. [Tr. Vol. 1Bat 14
(Felter Testimony).] FIMCO does sell directly to end-users, [Tr. Vol. 5B at 52 (Wipson
Testimony)], but it also sells to distributors, who sell to dealers, who then sell to end-users.
[See Tr. Vol. 5A at 33 (Kessler Testimony).]
49. Deere dealers market Deere products at their dealerships using materials such as brochures,
magazines, and catalogs; at trade shows; through direct mail; and through advertisements in
newspapers, on television, and on the radio. [Tr. Vol. 1B at 9 (Felter Testimony).] Deere also
markets its products on its website and on social media. [Id. at 11.] Additionally, Deere’s
public relations team orchestrates press releases to notify members of the agricultural
industry and the public of new products and features of Deere equipment. [Id. at 11–12.]
FIMCO markets its products at trade shows, through advertising in magazines and on the
radio, through traveling salespeople, on its website, at its ten physical locations, and at
dealerships that sell its products. [Tr. Vol. 5B at 52–53 (Wipson Testimony).] FIMCO also
distributes catalogs, parts books, and product brochures. [Id. at 74–75.]
50. The parties also often sell products within a close proximity to one another or at the same
dealership. For instance, Schwarz testified that there is a Deere dealer within fifteen miles of
FIMCO’s Columbus, Nebraska store. [Tr. Vol. 5A at 72 (Schwarz Testimony).] Similarly,

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Yeazel testified that there is a Deere dealer about five miles away from Fertilizer Dealer
Supply’s Milton, Wisconsin location. [Tr. Vol. 5A at 93, 112 (Yeazel Testimony).] Perkins
also testified that there is a Deere dealer located ten miles north of Perkins Sales’ location in
Bernie, Missouri and another Deere dealer located ten miles south of that location. [Tr. Vol.
5B at 21–22 (Perkins Testimony).] Additionally, the evidence at trial showed that twentyfour authorized Deere dealers also sell FIMCO equipment, further evidencing an overlap in
Deere and FIMCO’s marketing channels. [See Tr. Vol. 1B at 17–18 (Felter Testimony)
(identifying dealerships); Tr. Vol. 5B at 113–16 (Wipson Testimony) (identifying
dealerships).] See Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595, 602 (6th Cir. 1991)
(Wynn Oil II) (“The district court found an obvious overlap in the marketing channels used
because ‘[t]here are fifteen dealerships in Michigan where both Wynn and American Way
are selling under the X-TEND mark.’ . . . the district court's conclusion is based upon
permissible, and even probable, inferences from the facts. The common marketing channel of
auto dealerships adds to the likelihood of confusion.”).
51. For these reasons, the Court finds that this factor also favors Deere.
(6) Likely Degree of Purchaser Care
52. “Generally, in assessing the likelihood of confusion to the public, the standard used by the
courts is the typical buyer exercising ordinary caution. However, when a buyer has expertise
or is otherwise more sophisticated with respect to the purchase of the services at issue, a
higher standard is proper. Similarly, when services are expensive or unusual, the buyer can
be expected to exercise greater care in her purchases. When services are sold to such buyers,
other things being equal, there is less likelihood of confusion.” Homeowners, 931 F.2d at
1111.

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53. However, “[t]he effect of purchaser care, although relevant, will be less significant than, or
largely dependent upon, the similarity of the marks at issue. If the District Court ultimately
determines that the marks are not very similar, then even a high degree of purchaser care will
decrease only slightly the already low likelihood of confusion. Similarly, if the District Court
finds that the marks are quite similar, then purchaser care will decrease the likelihood of
confusion only minimally because the care and skill which a purchaser will have used when
deciding which [product] to buy will not have necessarily extended to his decision regarding
which retailer to buy from. That is, confusingly similar marks may lead a purchaser who is
extremely careful and knowledgeable about the instrument that he is buying to assume
nonetheless that the seller is affiliated with or identical to the other party.” Daddy’s, 109 F.3d
at 286.
54. The sixth factor presents a closer question. Several FIMCO witnesses testified at trial to the
fact that prospective customers of FIMCO sprayers and applicators are well-researched, wellinformed, and highly knowledgeable about the products they are considering buying. For
example, Schwarz testified that farmers “do a great deal of homework in the purchasing
process” and explained that a sprayer or applicator is “an important piece of equipment to
their farm. It takes care of their crops through the whole year and protects they're livelihood,
so they do a great amount of research on what they’re going to buy before they buy it.” [Tr.
Vol. 5A at 62 (Schwarz Testimony).] Yeazel testified that, when customers come in to make
a purchase, they have often already researched several other brands of equipment. [Tr. Vol.
5A at 102 (Yeazel Testimony).]
55. On the other hand, Schwarz, Yeazel, and Kessler each acknowledged that, at least to some
extent, there is a range of knowledge among prospective customers. Additionally, Thompson

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testified that, at Heritage Tractor, he encounters “guys that can afford anything and know
very little about anything, and we’ve got guys that can just barely get something financed but
know something about everything.” [Tr. Vol. 2A at 70 (Thompson Testimony).]
56. Similarly, Felter testified that farmers in the U.S. “take[ ] a lot of care in analyzing and
understanding price and features of” their agricultural equipment. [Tr. Vol. 1B at 49 (Felter
Testimony).] However, he further testified that customer knowledge “varies widely.” [Id. at
25–26.] Part of this variation in knowledge may be due to the fact that the frequency with
which farmers purchase trailed sprayers or applicators varies widely from farmer to farmer.
[Id.] For example, farmers who desire to keep their equipment under warranty or who have a
very high usage rate of their equipment each year may purchase a new piece of equipment
“perhaps every year or two.” [Id. at 26–27.] Those farmers may be far more knowledgeable
on the types and brands of equipment. On the other hand, farmers who “have low annual
usage or want a familiar tool [may] keep that [same] machine for many, many years,” [id.],
which may cause them to be less aware of changing equipment and manufacturers. Kessler
similarly testified that, with regard to purchase frequency, “[i]t could be every year. It could
be 20 years. It ranges.” [Tr. Vol. 5A at 40 (Kessler Testimony).]
57. The Sixth Circuit has noted that, where a district court finds that the marks at issue are highly
similar, as the Court has here, a high degree of purchaser care is less likely to significantly
decrease the risk of confusion. Daddy’s, 109 F.3d at 286. See also Induct-O-Matic Corp. v.
Inductotherm Corp., 747 F.2d 358, 364–65 (6th Cir. 1984) (quoting Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 264 (C.C.P.A. 1962) (“Being skilled in their own art does not
necessarily preclude their mistaking one trademark for another when the marks are as similar
as those here in issue, and cover merchandise in the same general field.)).

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58. The Court finds that the testimony in this case supports a finding that many customers in the
market for trailed agricultural implements exercise a high degree of care and sophistication.
However, this is likely not the case across the board. And, due to the high similarity between
the marks and the fact that both marks are used on the same or related types of agricultural
equipment, confusion is still possible. On the whole, however, the Court concludes that this
factor weighs in favor of FIMCO.
(7) The Intent of Defendant in Selecting the Mark
59. “If a party chooses a mark with the intent of causing confusion, that fact alone may be
sufficient to justify an inference of confusing similarity.” Homeowners, 931 F.2d at 1111
(quoting Wynn Oil I, 839 F.2d at 1189). “Intent is relevant because purposeful copying
indicates that the alleged infringer, who has at least as much knowledge as the trier of fact
regarding the likelihood of confusion, believes that his copying may divert some business
from the senior user.” Daddy's, 109 F.3d at 286. However, “[d]irect evidence of intentional
copying is not necessary to prove intent. Rather, the use of a contested mark with knowledge
of the protected mark at issue can support a finding of intentional copying. Further, the
extensive advertising and long-term use of a protected mark can create a presumption that the
alleged infringer knew of the protected mark.” Id. (internal citations omitted). “A finding that
the infringement was not intentional, however, [has] no significance for the ultimate inquiry
of likelihood of confusion.” Champions, 78 F.3d at 1121.
60. This factor, too, presents a somewhat close question. On one hand, it appears clear that
FIMCO commenced use of the green and yellow color scheme after it was aware of Deere’s
use of green and yellow on its agricultural equipment. As the Court discussed above, the
earliest evidence of FIMCO’s use of green and yellow (through JDD) on agricultural

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sprayers or applicators comes from the four December 1957 photographs. Two of those
photographs depict a Big Butch trailed three-barrel agricultural sprayer attached to a John
Deere tractor. [DX-10, DN 244-6 at 16, 18; Tr. Vol. 3B at 152–53; 155 (Vaughan
Testimony).] The other two photographs depict a Big Butch trailed single-barrel agricultural
sprayer attached to a John Deere tractor. [DX-10, DN 244-6 at 20, DN 244-7 at 1; Tr. Vol.
3B at 154–55 (Vaughan Testimony).] These photos alone, suggest that FIMCO had
“knowledge of the protected mark.” Daddy’s, 109 F.3d at 286.
61. On the other hand, “[h]owever, knowledge of a trademark, alone, will not support a finding
of intent to confuse if other circumstances show that the defendant believed there was no
infringement.” Progressive, 856 F.3d at 436. Vaughan testified at trial that the reason
FIMCO “chose or continued to use the colors green and yellow on its ag-related equipment
such as trailed sprayers” was “[b]ecause that’s what people were ordering.” [Tr. Vol. 3B at
59 (Vaughan Testimony).] Vaughan testified that, when FIMCO began offering trailed liquid
nutrient applicators in 2005 or 2006, the majority of them were green and yellow. [Id. at 60.]
Vaughan testified that the decision to use green and yellow was not “to ride on John Deere’s
back and deceive the farmer.” [Id.] Additionally, Vaughan testified that the first time he
learned that Deere had registered trademarks for its green and yellow color scheme was when
Deere served it with the papers instigating this litigation. [Id. at 62.]
62. Overall, the Court finds that there is insufficient evidence that FIMCO or JDD selected the
green and yellow colors with the “intent of causing confusion,” Homeowners, 931 F.2d at
1111, or that FIMCO or JDD had knowledge that Deere’s green and yellow colors were a
“protected mark.” Accordingly, the Court does not find that substantial evidence exists from
which to infer that FIMCO had the intent to cause confusion. Therefore, this factor is neutral.

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(8) Likelihood of Expansion of the Product Lines
63. “[A] ‘strong possibility’ that either party will expand his business to compete with the other
or be marketed to the same consumers will weigh in favor of finding that the present use is
infringing.” Daddy’s, 109 F.3d at 287 (quoting Homeowners, 931 F.2d at 1112). “A finding
that the parties will not expand their markets significantly, however, ‘does not address’ the
ultimate issue of likelihood of confusion.” Id. (citing Champions, 78 F.3d at 1122). “Thus, as
with the seventh factor, an affirmative finding will provide a strong indication that the
parties’ simultaneous use of the marks is likely to lead to confusion, while a negative finding
is not a strong indication to the contrary.” Id. (citing Champions, 78 F.3d at 1122).
64. At trial, Wipson, FIMCO’s President and Chief Operating Officer, testified that FIMCO
currently has no plans to expand its product line of large agricultural equipment, and more
specifically, no plans to expand into making or selling self-propelled agricultural sprayers or
tractors. [Tr. Vol. 5B at 84–85 (Wipson Testimony).] Deere did not present any evidence
with regard to its potential plans, or lack thereof, to expand its product lines.
65. However, in Wynn II, the Sixth Circuit affirmed the district court’s finding that, when the two
parties’ products directly compete with each other, “the ‘likelihood [of expansion of product
lines] is already a reality.’” Wynn Oil II, 943 F.2d at 604. See also Chrysler Corp. v. Newfield
Publications, Inc., 880 F. Supp. 504, 511 (E.D. Mich. 1995) (“In this case, the ‘possibility’ is
already a reality, because Plaintiffs have an established presence in the collectible card
market, and the Court has found that [Defendant]’s product competes with collectible cards.
Therefore, this factor must favor Plaintiffs.”).

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66. Because, as the Court concluded above, Deere and FIMCO already compete generally in the
agricultural market for sprayers and applicators, and already compete directly in the market
for trailed agricultural liquid nutrient applicators, this factor favors Deere.
(9) Balance of Factors
67. “[I]n the course of applying the Frisch factors, ‘[t]he ultimate question remains whether
relevant consumers are likely to believe that the products or services offered by the parties
are affiliated in some way.’” Progressive, 856 F.3d at 436 (quoting Homeowners, 931 F.2d at
1107).
68. Having considered and weighed each of the Frisch’s factors, the Court concludes that Deere
has carried its burden of proving, by a preponderance of the evidence, that FIMCO’s use of
green and yellow on trailed agricultural sprayers and liquid applicators is likely to cause
confusion. It is true, as FIMCO has argued, that some factors weigh in its favor. Specifically,
the high degree of purchaser care and the decrease in strength of Deere’s use of green and
yellow on trailed agricultural equipment due to multiple other companies’ use of that color
scheme throughout the years weigh in FIMCO’s favor.
69. However, more factors weigh in favor of Deere. Specifically, the relatedness of the goods,
the similarity of the marks, evidence of actual confusion, the marketing channels used, and
the likelihood of expansion factors all weigh in favor of Deere. Accordingly, “[b]earing in
mind that a successful Lanham Act plaintiff only must show a sufficient potential of
confusion,” the Court finds that Deere has made such a showing. Daddy’s, 109 F.3d at 284.
Indeed, the Sixth Circuit has affirmed findings of trademark infringement in cases in which
the strength and consumer sophistication factors weigh in favor of the defendant. See Stilson
& Assocs., Inc. v. Stilson Consulting Grp., LLC, 129 F. App’x 993, 997, 999 (6th Cir. 2005)

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(“The court acknowledged that some factors weighed in favor of Defendants-the degree of
purchaser care and the decline in the strength of the Stilson & Associates name since 1995.
But, according to the court, the relatedness of the services offered by Plaintiffs and
Defendants, as well as the similarity of the marks, tipped the scale in Plaintiffs’ favor . . . In
sum, we find no clear error in the district court’s underlying factual findings, and we agree
that those findings support a conclusion that Defendants' use of the Stilson name created a
likelihood of confusion.”).
B. False Designation of Origin in Violation of §1125(a) and Trademark Infringement
in Violation of Kentucky Common Law.
70. In addition to Deere’s federal trademark infringement claim under § 1114, Deere brought
claims for federal false designation of origin in violation of §1125(a) and trademark
infringement in violation of Kentucky common law. Both of “these claims mirror the
previously discussed federal claim of trademark infringement by also requiring proof of a
likelihood of confusion.” Daddy's, 109 F.3d at 288. See also Wynn Oil II, 943 F.2d at 604
(“[L]ikelihood of confusion is the essence of an unfair competition claim [in] that the same
factors are considered under section 1125(a) as are considered under section 1114.”); Colston
Inv. Co. v. Home Supply Co., 74 S.W.3d 759, 766 (Ky. Ct. App. 2001) (Identifying
Kentucky’s “test of infringement [a]s the likelihood of confusion.”).
71. Because the Court has found, as a matter, of law, that there is a likelihood of confusion as a
result of FIMCO’s use of green and yellow on its trailed sprayers and applicators, this finding
applies also to Deere’s claims of false designation of origin and Kentucky trademark
infringement. Accordingly, Deere also succeeds on these claims.

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C. Trademark Dilution
72. Deere also claims that FIMCO’s use of green and yellow colors on its trailed agricultural
sprayers and liquid nutrient applicators dilutes Deere’s famous trademark in green and
yellow as it is used on John Deere agricultural tractors.
73. “Dilution law, unlike traditional trademark infringement law ... is not based on a likelihood
of confusion standard, but only exists to protect the quasi-property rights a holder has in
maintaining the integrity and distinctiveness of his mark.” Audi AG v. D’Amato, 469 F.3d
534, 547 (6th Cir. 2006) (quoting AutoZone, 373 F.3d at 801; Kellogg Co. v. Toucan Golf,
Inc., 337 F.3d 616, 628 (6th Cir. 2003)). Accordingly, “the presence or absence of actual or
likely confusion, of competition, or of actual economic injury” is irrelevant. § 1125(c)(1).
Rather, the focus is on “whether a senior user’s distinctive and famous mark is being diluted
by another’s use of a similar mark that weakens the strength or damages the reputation of the
senior mark.” Maker’s Mark, 703 F. Supp. 2d at 697 (citing Jet, Inc. v. Sewage Aeration Sys.,
165 F.3d 419, 425 (6th Cir. 1999)).
74. Here, Deere alleges dilution by blurring, which is defined as “association arising from the
similarity between a mark or trade name and a famous mark that impairs the distinctiveness
of the famous mark.” § 1125(c)(2)(B).
75. In order to prevail on a claim of dilution by blurring, Deere, as the “senior user” of the mark,
must demonstrate that its mark is 1) famous and 2) distinctive, that FIMCO’s “junior mark”
was 3) used in commerce, 4) such use began after the senior mark became famous, and 5)
that use “is likely to cause dilution by blurring . . . of the famous mark.” § 1125(c)(1).

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(1) Fame of Deere’s Mark
76. Deere asserts that its trademark in green and yellow on Deere tractors is “famous” within the
meaning of the dilution statute. A “famous mark” is a mark “widely recognized by the
general consuming public of the United States as a designation of source of the goods or
services of the mark’s owner.” § 1125(c)(2)(A).
77. In determining whether a mark is sufficiently “widely recognized” so as to become famous
for dilution purposes, courts may consider, in addition to any other relevant factors, four
factors specifically listed in the statute: 1) “[t]he duration, extent, and geographic reach of
advertising and publicity of the mark, whether advertised or publicized by the owner or third
parties,” 2) [t]he amount, volume, and geographic extent of sales of goods or services offered
under the mark, 3) [t]he extent of actual recognition of the mark, and 4) “whether the mark
was registered . . . on the principal register.” § 1125(c)(2)(A)(i)–(iv).
78. Under the 2006 revision to federal trademark law, known as the Trademark Dilution
Revision Act (TRDA), courts have found such marks famous as Audi, “America’s Team” in
reference to the Dallas Cowboys, Apple iPhone, Big Gulp, Blackberry, Burberry, Chanel,
Citibank, Delta airlines, Nike’s “Just Do It” slogan, Louis Vuitton, McDonald’s, Miss USA
beauty pageant, Motown music, Newport cigarettes, NYC Triathlon competition, Nike
athletic shoes and clothing, Pepsi, Rolex, Rolls-Royce automobiles, Starbuck’s coffee, “The
House that Ruth Built” in reference to the New York Yankees, “The Other White Meat”
slogan promoting pork, Viagra, Victoria’s Secret, and Visa. 4 McCarthy, supra, § 24:107
(collecting cases).
79. In this case, Deere put on extensive evidence relating to if and when its trademark in green
and yellow, as used John Deere agricultural tractors, became famous. Above, the Court made

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findings of fact relating to Deere’s advertising, sales and “actual recognition” of Deere’s use
of green and yellow by the public. Having considered all of this evidence together, the Court
finds that Deere’s mark was famous by approximately 1968, and certainly by the time
Deere’s mark was registered in 1988 and by time the Court finds that FIMCO began using
green and yellow on trailed agricultural implements in commerce in 1998.
80. Though Deere urges the Court to find that its mark was famous earlier, by the mid-1950s, the
Court does not find that sufficient evidence exists to find fame at that time. Though Deere
spent significantly on advertising and publicity and made significant revenue in the 1950s
and early 1960s, the majority of the evidence of public recognition of Deere’s mark in that
time period was still primarily in regional publications, trade publications, or publications
that dealt specifically with farming. [See, e.g., PX-641; PX-648; PX-660; PX-663; PX-664;
PX-665; PX-667; PX-148.]
81. Between 1964 and 1968, however, Deere was featured by Forbes, Fortune, and
Businessweek, all of which are national publications. [PX-670; PX-672; PX-673; PX-674.]
Though the Court recognizes that articles in these national publications do not constitute
direct evidence of “actual recognition,” they do provide circumstantial evidence that Deere’s
use of green and yellow was “widely recognized by the general consuming public of the
United States as a designation of source of” Deere’s agricultural products. See 15 U.S.C §
1125(c)(2)(A).
82. In sum, the Court finds that Deere’s mark was famous by about 1968, and, at the latest, by
the time Deere registered its trademark in green and yellow on agricultural tractors in 1988.

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(2) Distinctiveness of Deere’s Mark
83. “Only those marks that are ‘distinctive’ as a matter of law are accorded trademark
protection.” Leelanau Wine Cellars, 502 F.3d at 512 (citing Abercrombie & Fitch Stores, Inc.
v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002)). There are two categories of
distinctive trademarks: “(1) those that are inherently distinctive, and (2) those that have
acquired distinctiveness through secondary meaning.” DeGidio v. W. Grp. Corp., 191 F.
Supp. 2d 904, 910 (N.D. Ohio 2002), aff'd, 355 F.3d 506 (6th Cir. 2004).
84. The Supreme Court has held that, “with respect to at least one category of mark—colors— . .
. no mark can ever be inherently distinctive.” Wal-Mart Stores, Inc. v. Samara Bros., 529
U.S. 205, 211 (2000). Accordingly, for a trademark in color to be distinctive, it must become
so by acquiring secondary meaning. “To demonstrate secondary meaning, the evidence must
show that ‘in the minds of the public, the primary significance of the trade dress is to identify
the source of the product rather than the product itself.’” Gen. Motors Corp., 468 F.3d at 418
(quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 (1982)).
85. “Registration of a mark on the Principal Register of the USPTO creates a rebuttable
presumption that a trademark is valid, that is, either inherently distinctive or descriptive with
secondary meaning, and therefore, protectable under federal trademark law.” Leelanau Wine
Cellars, 502 F.3d at 513 (citing 15 U.S.C. § 1115(a)).
86. Moreover, once a registered trademark becomes incontestable pursuant to 15 U.S.C. § 1065,
the registration for the mark is “conclusive evidence of the validity of the registered mark.”
15 U.S.C. § 1115(b). A mark that has been registered for at least five years becomes
incontestable provided that the owner of the mark files, within one year following a five-year
period of use after the mark’s registration, a “Section 15” affidavit averring that “those goods

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or services stated in the registration on or in connection with which such mark has been in
continuous use for such five consecutive years and is still in use in commerce,” that there has
been no adverse decision as to the owner’s right to the marks, and that there are no such
challenges pending either in the courts or in the PTO. § 1065(1)–(3).
87. Deere filed a Section 15 affidavit for its ‘103 and ‘576 Registrations in October 1996. [See
PX-150; PX-151.] Accordingly, Deere’s ‘103 Registration, which covers agricultural tractors
“consist[ing] of a green vehicle body or frame with yellow wheels,” [PX-1], is incontestable,
and therefore presumptively valid. In other words, it is presumptively “descriptive with
secondary meaning,” Leelanau Wine Cellars, 502 F.3d at 513, meaning it is distinctive.
DeGidio, 191 F. Supp. 2d at 910.
88. FIMCO has not challenged the incontestability status of Deere’s ‘103 Registration, nor has it
attempted to argue that Deere’s use of green and yellow on John Deere tractors lacks
distinctiveness or strength. Indeed, multiple FIMCO witnesses at trial confirmed that Deere is
the only company who makes a green and yellow agricultural tractor and that farmers who
view a green and yellow agricultural tractor will think of Deere as the source. [See, e.g., Tr.
Vol. 5A at 51 (Kessler Testimony); Tr. Vol. 5B at 101–102 (Wipson Testimony).]
89. Accordingly, the Court concludes that Deere’s trademark of green and yellow on agricultural
tractors is a distinctive mark.
(3) Whether FIMCO’s Mark Was Used in Commerce and Whether That Use Began After
Deere’s Mark Became Famous
90. Next, the Court must determine when FIMCO first began using green and yellow on sprayers
and applicators and whether, when that use began, Deere’s mark was already famous. See §
1125(c)(1). As the Court held above, Deere’s mark was famous by approximately 1968 or, at
the latest, by 1988, when its mark was registered on the Principal Register.
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91. Because the Court concluded above in its findings of fact that FIMCO did not present
sufficient evidence that it made and sold green and yellow trailed agricultural equipment in
commerce until 1998, the Court concludes that FIMCO began using the green and yellow
color scheme on its green and yellow trailed equipment after Deere’s mark became famous.
(4) Whether FIMCO’s Use of Green and Yellow on Sprayers and Applicators is Likely to
Cause Dilution By Blurring of Deere’s Mark
92. The fourth and final element of trademark dilution that Deere must prove is that FIMCO’s
use of green and yellow on trailed agricultural sprayers and applicators is likely to cause
dilution by blurring of Deere’s famous mark, that is, of Deere’s use of green and yellow on
its agricultural tractors. See § 1125(c)(1).
93. “In determining whether a mark . . . is likely to cause dilution by blurring, the [C]ourt may
consider all relevant factors, including the following [six]: “(i) The degree of similarity
between the mark or trade name and the famous mark;” “(ii) The degree of inherent or
acquired distinctiveness of the famous mark;” “(iii) The extent to which the owner of the
famous mark is engaging in substantially exclusive use of the mark;” “(iv) The degree of
recognition of the famous mark;” “(v) Whether the user of the mark or trade name intended
to create an association with the famous mark;” and “(vi) Any actual association between the
mark or trade name and the famous mark.” § 1125(c)(2)(B)(i)–(vi).
i. Degree of Similarity Between Deere’s Famous Mark and FIMCO’s Use
of Green and Yellow
94. In its post-trial proposed findings, FIMCO argues that Deere has improperly focused its
dilution claim on the fame of its trademark rights in green and yellow as used on Deere
tractors as opposed to Deere trailed agricultural implements. [See DN 338 at 20–23.]
Indeed, Poret’s Fame Survey used a picture of a green and yellow tractor rather than a piece

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of green and yellow trailed agricultural equipment. [PX-704; Tr. Vol. 2B at 33 (Poret
Testimony).] However, as Deere has argued, the standard only requires that Deere’s famous
mark and FIMCO’s use of the junior mark be “similar,” not that they be used on identical
goods. [See DN 337 at 61–62.] This is because “The purpose of anti-dilution laws is to
provide a narrow remedy when the similarity between two marks is great enough that even a
noncompeting, nonconfusing use is harmful to the senior user.” AutoZone, 373 F.3d at 805–
06 (quoting Jet, 165 F.3d at 425). In other words, it is possible for FIMCO’s use of green and
yellow on its products to dilute the strength of Deere’s famous mark as used on a different
product, agricultural tractors.
95. However, it is still the case “that a high degree of similarity, ranging from ‘nearly identical’
to ‘very similar,’ is required for a dilution claim to succeed.” Id. at 806.14 This requirement
is clearly satisfied here. First, the parties have stipulated to the facts that the green and yellow
colors that Deere uses on its agricultural tractors and the green and yellow colors FIMCO
uses on its trailed agricultural equipment are “indistinguishable from each other to the naked
eye” and “indistinguishable from each other when appearing on equipment in the field.” [DN
164 at 1–2 (Stipulated Facts).] Second, the placement of the colors on the parties’ respective
goods is nearly identical. Deere tractors feature green bodies, green frames, yellow wheels,

14
  At least two circuit courts of appeal have held that the Trademark Dilution Revision Act of 2005 (TDRA)
eliminated the old requirement that two marks be “nearly identical” or “substantially similar” in order for a dilution
claim to be successful. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 107–110 (2d Cir. 2009)
(“The post-TDRA federal dilution statute . . . provides us with a compelling reason to discard the ‘substantially
similar’ requirement for federal trademark dilution actions. The current federal statute defines dilution by blurring as
an ‘association arising from the similarity between a mark ... and a famous mark that impairs the distinctiveness of
the famous mark,’ and the statute lists six non-exhaustive factors for determining the existence of an actionable
claim for blurring. 15 U.S.C. § 1125(c)(2)(B). Although ‘similarity’ is an integral element in the definition of
‘blurring,’ we find it significant that the federal dilution statute does not use the words ‘very’ or ‘substantial’ in
connection with the similarity factor to be considered in examining a federal dilution claim.”) Levi Strauss & Co. v.
Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1172–73 (9th Cir. 2011) (same). It appears the Sixth Circuit has
not addressed the issue. However, because the Court finds that Deere and FIMCO’s marks are “very similar” under
even this high standard, this factor still weighs in favor of Deere.

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and yellow accents. [See, e.g., PX-257.] Similarly, FIMCO trailed agricultural equipment
feature green frames, yellow wheels, and yellow tanks. [See, e.g., PX-301; PX-331.] Third,
photographs of FIMCO trailed agricultural equipment being pulled by John Deere tractors
likewise show the high degree of similarity between the use of green and yellow on the two
types of goods. [See, e.g., DX-51.] Accordingly, this factor weighs in favor of a likelihood of
dilution by blurring.
ii. Degree of Acquired Distinctiveness of Deere’s Famous Mark
96. As the Court mentioned above, Deere’s famous trademark in green and yellow on its
agricultural tractors is highly distinctive. A mark is highly distinctive “if the public readily
accepts it as the hallmark of a particular source; it can become so because it is unique,
because it has been the subject of wide and intensive advertisement, or because of a
combination of both.’” Maker's Mark, 679 F.3d at 419 (quoting Homeowners, 931 F.2d at
1107). Green and yellow tractors meet each of these factors. First, they are unique in that no
other company manufactures a green and yellow agricultural tractor. Second, Deere tractors
have been advertised and marketed extensively for decades. As a result, green and yellow
tractors are a clear “hallmark” of John Deere. [See e.g., Tr. Vol. 5A at 43 (Kessler
Testimony) (Agreeing that “any farmer . . . who sees a green and yellow tractor will think it’s
from Deere.”); Tr. Vol. 5A at 81 (Schwarz Testimony) (Agreeing that “a farmer who sees
green and yellow on a tractor is going to understand John Deere is the source, the maker of
that tractor.”); Tr. Vol. 5A at 121 (Yeazel Testimony) (Agreeing that he does not “know of
any other company that makes green and yellow tractors except Deere.”); Tr. Vol. 5B at 27
(Perkins Testimony) (Agreeing that “it’s common knowledge that Deere makes green and

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yellow tractors.”).]. Accordingly, this factor also weighs in favor of a finding of likelihood of
dilution by blurring.
iii. Extent to Which Deere is Engaging in Substantially Exclusive Use of its
Famous Mark
97. As the Court noted above, Deere is the only manufacturer of green and yellow tractors.
Therefore, Deere is engaged in exclusive use of its famous mark. [Tr. Vol. 5A at 121 (Yeazel
Testimony) (Agreeing that he does not “know of any other company that makes green and
yellow tractors except Deere.”); Tr. Vol. 5B at 101–102 (Wipson Testimony) (Agreeing that
Deere is the only manufacturer of green and yellow tractors and that farmers who sees a
green and yellow tractor “will immediately understand that it comes from Deere.”).]
Therefore, the third factor also weighs in favor of a likelihood of dilution by blurring.
iv. Degree of Recognition of Deere’s Famous Use of Green and Yellow on
Tractors
98. Based on Poret’s Fame Survey, the Court finds that there is a high degree of actual
recognition of the source of green and yellow tractors as John Deere by the general
consuming public. Specifically, the Fame Survey, in which respondents were shown an
image of a green and yellow tractor, but with all brand names and symbols removed, resulted
in a net of 74% of respondents who identified John Deere as the brand or maker of the green
and yellow tractor. [Tr. Vol. 2A at 34 (Poret Testimony).]
99. FIMCO argues that Poret’s Fame Survey used flawed methodology by attempting to measure
the fame of green and yellow as used on a John Deere tractor as opposed to the fame of green
and yellow as used on a John Deere sprayer or applicator. [See Tr. Vol. 2B at 40–45; DN 338
at 21–23.] Again, however, as the Court noted above, for dilution purposes, the junior user’s
mark need not be used on identical or competing goods as the senior user’s mark. Rather, the

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relevant question is instead whether the junior user’s mark bears “a high degree of similarity,
ranging from ‘nearly identical’ to ‘very similar,’” to the senior user’s mark. AutoZone, 373
F.3d at 806 (quoting Jet, 165 F.3d at 425). Because the Court concluded that FIMCO’s mark
and Deere’s famous mark are very similar, the fact that Deere’s mark is famous with regard
to its tractors, while FIMCO uses its mark on sprayers and applicators, does not affect
Deere’s dilution claim.
v. Whether FIMCO Intended to Create an Association with Deere’s
Famous Mark
100.

The evidence in this case strongly supports a finding that FIMCO chose its green and

yellow color scheme to associate with Deere’s famous green and yellow tractors. Indeed,
FIMCO put on four witnesses who all testified that farmers want their trailed agricultural
implements to match their tractors and that, all other qualifications being equal, a farmer with
a John Deere tractor would prefer to purchase a green and yellow trailed sprayer or applicator
for that reason. [See Tr. Vol. 5A at 28–29, 48 (Kessler Testimony); Tr. Vol. 5A at 67–68
(Schwarz Testimony); Tr. Vol. 5A at 106 (Yeazel Testimony); Tr. Vol. 5B at 16–17 (Perkins
Testimony).] Moreover, FIMCO trailed equipment is often depicted being pulled by John
Deere tractors. [See, e.g., DX-51 (1998 FIMCO Sprayer & Sprayer Parts Catalog); DX-60
(2006 Schaben Catalog); DX-28 (2009 Ag Spray Catalog).]
101.

Though Vaughan also testified a few times that green and yellow are “the color[s] of

agriculture”, rather than John Deere, the Court does not find this testimony to be credible in
light of FIMCO’s repeated arguments throughout this litigation that farmers want to buy
agricultural implements that match their Deere tractors and that dealers would be at a
disadvantage if they were not allowed to sell green and yellow implements. Moreover,
Vaughan himself referred to green and yellow as “the John Deere colors” at trial. [See Tr.
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Vol. 6B at 60 (Vaughan Testimony) (“Majority of them [that we sold] were green and
yellow, but we did sell some that were red, and I believe we made a few that were just black.
I don't think the Case IH guy probably likes the John Deere colors sitting in his lot.”).]
102.

Overall, the Court finds that the evidence supports a finding that FIMCO intended to

associate its products with John Deere tractors, and therefore that this factor favors a finding
of likelihood of dilution.
vi. Actual Association Between FIMCO’s Use of Green and Yellow and
Deere’s Famous Use of Green and Yellow on Tractors
103.

Poret’s Dilution Surveys also tend to support a finding that there is “actual association”

between FIMCO’s use of green and yellow and Deere’s famous use of green and yellow on
its tractors. Specifically, when shown images of FIMCO equipment, several survey
participants answered that Deere came to mind. The Schaben Dilution Survey resulted in a
net of 38% of respondents who responded that Deere came to mind when viewing a piece of
green and yellow Schaben trailed equipment, and the Ag Spray Dilution Survey resulted in a
net of 43% of respondents who responded that Deere care to mind when viewing a piece of
green and yellow Ag Spray trailed equipment. [See Tr. Vol. 2B at 29 (Poret Testimony).]
Because there is evidence of actual mental association between FIMCO’s use of green and
yellow and John Deere, this factor also weighs in favor of a finding of likelihood of dilution.
vii. Balance of Likelihood of Dilution Factors
104.

Having considered each of the factors enumerated in § 1125(c)(2)(B), the Court finds

that, because all six factors weigh in favor of a finding that FIMCO’s use of green and yellow
on trailed agricultural implements creates a likelihood of dilution of Deere’s famous use of
green and yellow on Deere tractors, this element is also satisfied.

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105.

In sum, Deere has proven to the Court that its use of green and yellow on tractors is a

famous and distinctive trademark, that FIMCO used a very similar mark in commerce after
Deere’s mark became famous, and that FIMCO’s use of green and yellow is likely to cause
dilution by blurring of Deere’s famous mark. See § 1125(c)(1). Therefore, pursuant to
§1125(c)(1), Deere is entitled to an injunction against FIMCO.
D. Affirmative Defenses
106.

FIMCO asserts two affirmative defenses in this case: acquiescence and estoppel.

Specifically, FIMCO asserts that Deere must have been aware of its use of green and yellow
long before 2011 and that Deere’s delay in asserting its trademark rights constitutes
acquiescence or estoppel, both of which FIMCO has the burden of proving. Kellogg Co. v.
Exxon Corp., 209 F.3d 562, 568–69 (6th Cir. 2000) (Explaining that the defendant, Exxon,
had to prove its affirmative defense of acquiescence).
107.

Acquiescence, like laches, requires a “finding of conduct on the plaintiff's part that

amounted to an assurance to the defendant, express or implied, that plaintiff would not assert
his trademark rights against the defendant.” Id. at 569 (quoting Elvis Presley Enter., Inc., v.
Elvisly Yours, Inc., 936 F.2d 889, 894 (6th Cir. 1991)). While “both laches and acquiescence
require proof that the party seeking to enforce its trademark rights has unreasonably delayed
pursuing litigation and, as a result, materially prejudiced the alleged infringer, acquiescence
requires more.” Id. Specifically, “acquiescence is intentional. Acquiescence requires ‘a
finding of conduct on the plaintiff’s part that amounted to an assurance to the defendant,
express or implied, that plaintiff would not assert his trademark rights against the
defendant.’” Elvis Presley Enterprises, 936 F.2d at 894 (quoting Sweetheart Plastics, Inc. v.
Detroit Forming, Inc., 743 F.2d 1039, 1046 (4th Cir. 1984)).

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108.

Similarly, estoppel “requires more than a showing of mere silence on the part of a

plaintiff; defendant must show that it had been misled by plaintiff through actual
misrepresentations, affirmative acts of misconduct, intentional misleading silence, or conduct
amounting to virtual abandonment of the trademark.” Nartron Corp. v. STMicroelectronics,
Inc., 305 F.3d 397, 412–13 (6th Cir. 2002) (citing SCI Systems, Inc. v. Solidstate Controls,
Inc. 748 F.Supp. 1257, 1261–62 (S.D. Ohio 1990)).
109.

The Court finds that FIMCO has not proven, by a preponderance of the evidence, that

Deere engaged in conduct that amounted to the intentional, affirmative conduct or
misrepresentations that are required to prove acquiescence and estoppel. FIMCO has argued
that Deere products and FIMCO products were advertised at the same farm shows in close
proximity to each other. However, as the Court found above in its findings of fact, the Court
is not persuaded that Deere representatives who were actually chargeable with the
enforcement of Deere’s trademarks learned of FIMCO’s use long before 2010 or 2011, as is
required to charge Deere with knowledge. McCarthy, the leading commentator on
trademarks and unfair competition, has stated that corporations are “not charged with notice
[of use] if business dealings with defendant were conducted by lower echelon employees
who had no duty to report instances of trademark infringement.” 6 McCarthy, supra, at §
31:39 (citing General Tire & Rubber Co. v. Greenwold, 127 U.S.P.Q. 240 (S.D. Cal. 1960)).
Moreover, “the knowledge of a plaintiff's sales representative will not be imputed to a
corporate plaintiff where it was not the duty of the sales representative to investigate
trademark infringement.” Id. (citing Official Airline Guides v. Churchfield Publications, 756
F. Supp. 1393 (D. Or. 1990)). Rather, “to impute an agent's knowledge to a principal, it must
be shown that the agent had duties with respect to trademark matters, although the agent need

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not have acquired his knowledge in connection with those duties.” Id. (citing Dawn Donut
Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 121 U.S.P.Q. 430 (2d Cir. 1959); DC Comics,
Inc. v. Powers, 465 F. Supp. 843, 201 U.S.P.Q. 99 (S.D. N.Y. 1978)).
110.

Because, as the Court explained above, FIMCO has not proved Deere’s knowledge of its

use of green and yellow by virtue of farm shows, Deere dealers, or prior correspondence with
JDD Lubricants, the Court finds that FIMCO has failed to prove the requisite conduct.
Additionally, the evidence of FIMCO’s expansion through the 1990s and 2000s further
convinces the Court of the credibility of Deere’s assertion that it did not learn of FIMCO’s
use of green and yellow until 2010 or 2011. Moreover, even if FIMCO could show
knowledge, mere knowledge is not enough. Rather, FIMCO must show that Deere acted
intentionally, through affirmative conduct or actual misrepresentations. FIMCO has shown
no such actions. The evidence is to the contrary, in fact. Specifically, correspondence
between Deere and JDD in 1943 and 1963 show that Deere did try to prevent JDD from
indicating an affiliation with Deere, either through the use of the “JDD” initials or through
the use of green and yellow on oil cans. Moreover, Deere’s extensive enforcement efforts
between 2000 and 2011 further convince the Court that, had Deere been aware of FIMCO’s
use of green and yellow, it likely would have initiated enforcement efforts sooner, as it did
with nearly 39 other companies during that time period.
111.

In sum, FIMCO has not proved the required elements of its affirmative defenses of

acquiescence and estoppel.
VI.

REMEDY

112.

Needless to say, there was a considerable amount of live and designated deposition

testimony and a significant number of exhibits presented by the parties and considered by the

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Court in this case. The end result was this opinion of over 100 pages. Though there were
some findings that did not garner much dispute, there were certainly many issues for which
the parties offered conflicting evidence. Said another way, there were many issues where the
trier of fact could go either way in this case. The attorneys for both sides were professional,
well-prepared, and did an outstanding job. Ultimately, the outcome depended upon the
weight of the evidence and which evidence the Court found to be more probative and
persuasive. At the end of the day, the Court found that Deere carried the day.
113.

Having succeeded on its claims of federal and state trademark infringement, unfair

competition and false designation of origin, and dilution, the Court will now address the
appropriate remedy. In this case, Deere requests that the Court enter a permanent injunction
prohibiting FIMCO and “its affiliates, officers, agents, servants, employees, attorneys, and all
other persons in active concert or participation with” FIMCO from (1) “using the Deere
Colors in connection with its sprayers and other wheeled agricultural equipment,” (2) “using
yellow tanks or wheels in connection with its green-bodied wheeled agricultural equipment,”
and (3) prohibiting “all manufacture, purchase, promotion, sale, and use of any products,
packaging, advertising, labels, websites, or other sales or shipping material that infringe
Deere’s rights in the Deere Colors or the use of yellow tanks or wheels in connection with
green-bodied wheeled agricultural equipment.” [DN 1 at 9.]
114.

The Lanham Act gives courts the “power to grant injunctions, according to the principles

of equity and upon such terms as the court may deem reasonable, to prevent the violation of
any right” protected under the Act. 15 U.S.C. § 1116(a). “In the Sixth Circuit, ‘[i]njunctive
relief is the remedy of choice for trademark and unfair competition cases, since there is no

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adequate remedy at law for the injury caused by a defendant's continuing infringement.’”
Maker's Mark, 703 F. Supp. 2d at 700 (quoting Audi, 469 F.3d at 550).
115.

“A plaintiff seeking a permanent injunction must demonstrate [(1)] that it has suffered

irreparable injury, [(2)] there is no adequate remedy at law, [(3)] ‘that, considering the
balance of hardships between the plaintiff and defendant, a remedy in equity is warranted,’
and [(4)] that it is in the public's interest to issue the injunction.” Audi, 469 F.3d at 550
(citing eBay Inc., et al. v. MercExchange, LLC, 547 U.S. 388 (2006)).
116.

First, “[g]enerally, irreparable injury, the first factor, is presumed from a showing of

success on the merits of a trademark infringement claim.” Maker’s Mark, 703 F. Supp. at 700
(citing DaimlerChrysler v. The Net Inc., 388 F.3d 201, 208 (6th Cir. 2004); Circuit City
Stores, Inc. v. CarMax, Inc., 165 F.3d 1047, 1056 (6th Cir. 1999)). Because the Court has
found that Deere has succeeded on its claims, this factor is satisfied.
117.

Second, so long as FIMCO continues using the green and yellow color combination,

“there [i]s potential for future harm, and therefore, there [i]s no adequate remedy at law.”
Audi, 469 F.3d at 550.
118.

Third, in considering the balance of hardships between the parties, FIMCO has argued

that it would be disadvantaged if it were not able to sell green and yellow equipment because
farmers prefer to match their implements to their tractors. [See, e.g., Tr. Vol. 5A at 69
(Schwarz Testimony) (stating that he would be at a disadvantage “if [he] were not able to
offer and green and yellow piece of trailed equipment and someone else was able to.”).] As
an initial matter, FIMCO’s intent to create an association with John Deere green and yellow
tractors due to farmers’ “desire to match” is precisely one of the factors the Court finds
weighs in favor of a finding of likelihood of dilution in this case. Moreover, however, it is no

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longer the case that “many other manufacturers . . . continue to manufacture green and
yellow pulled equipment.” [Id. at 70.] Rather, the evidence in this case indicates that, though
as many as forty other short-line manufacturers sold green and yellow equipment in the past,
only three continue do so today, one of which being FIMCO. Accordingly, the Court does
not find that any significant competitive disadvantage alleged by FIMCO is a sufficient
hardship to weigh against issuing an injunction. Finally, Wipson, FIMCO’s President and
COO, testified that FIMCO’s green and yellow equipment currently only makes up “about 4
percent of [FIMCO’s] revenue.” [Tr. Vol. 5B at 46 (Wipson Testimony).] This, too, weighs
against a finding of significant hardship on behalf of FIMCO.
119.

On the other hand, Deere’s hardships appear to be much greater. “Over many years,

[Deere] has expended considerable amounts of money and effort building consumer
association between the [green and yellow colors] and its [equipment],” while FIMCO has
marketed its green and yellow equipment less extensively and for a shorter period of time.
See Maker's Mark, 703 F. Supp. 2d at 700 (“When considering the third factor—the
hardships of such a remedy—Maker's Mark's concerns seem to be much greater than
Cuervo’s. Over many years, Maker's Mark has expended considerable amounts of money and
effort building consumer association between the red wax seal and its bourbon. Cuervo has
put little effort into marketing Reserva and the red dripping wax seal on its bottle.”).
120.

Fourth and finally, the Sixth Circuit has explained that “[i]t [i]s in the public’s interest to

issue the injunction in order to prevent consumers from being misled.” Audi, 469 F.3d at 550.
121.

Overall, the Court finds that each of these factors support a finding that equity supports

awarding injunctive relief.

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122.

The Court’s task, then, is to determine the appropriate scope of the injunction. District

courts have broad discretion in issuing injunctions, and “[t]he scope of injunctive relief is
reviewed for abuse of discretion.” Audi, 469 F.3d at 550 (citing Gibson Guitar Corp. v. Paul
Reed Smith Guitars, LP, 423 F.3d 539, 546 (6th Cir. 2005)).
123.

The Court grants Deere’s request for an injunction as follows:
Defendant FIMCO, Inc. and its affiliates, officers, agents, servants, employees,
attorneys, and all other persons in active concert or participation with FIMCO are
hereby permanently enjoined from using a combination of green and yellow
colors in the manufacture, sale, offering for sale, distribution, promotion,
marketing, or advertising of FIMCO trailed and wheeled agricultural equipment at
any locality within the United States. This injunction does not prohibit the abovedescribed persons and entities from using solely the color green or solely the color
yellow in connection with agricultural equipment, nor does it prohibit the use of
green with another color or yellow with another color. However, it does prohibit
the use of any combination of green and yellow together on a piece of equipment.

VII.

CONCLUSION
Pursuant to the Findings of Fact and Conclusions of Law set out herein, the Court finds in

favor of Deere & Company on its claims of federal trademark infringement in violation of 15
U.S.C. § 1114, federal false designation of origin and unfair competition in violation of 15
U.S.C. § 1125(a), federal trademark dilution in violation of 15 U.S.C. § 1125(c), and common
law trademark infringement in violation of the laws of Kentucky. The Court also finds against
FIMCO on its affirmative defenses and its counterclaims seeking a declaration that its conduct is
non-infringing. Accordingly, the Court will issue the above-described permanent injunction
against FIMCO, Inc.
Pursuant to 15 U.S.C. § 1116(a), within sixty (60) days of the issuance of this
Memorandum Opinion, FIMCO is directed to file with the Court and serve on Deere a report, in
writing, detailing the manner and form in which FIMCO has and will comply with the

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injunction. Deere shall, within fourteen (14) days of the issuance of this Memorandum Opinion,
file any motion for costs and attorneys’ fees.
The Court will enter an Order and Judgment consistent with the Findings of Fact and
Conclusions of Law set out in this Memorandum Opinion.
Date:
cc:

October 13, 2017

Counsel

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