Oct. 06--If you're in the power tool business, the color of money is black and yellow.
That's the verdict of a federal jury, which on Monday ordered a toolmaker that infringed on DeWalt's trademark color scheme to pay damages of $54 million.
The massive verdict against Chinese-owned Positec in Chicago's federal courthouse is a major victory for DeWalt's owner, Black Decker, which transformed its professional power tool business in the 1990s by reviving the DeWalt brand and adopting the now iconic yellow and black look on all of its tools.
Jurors found that the use of a near identical color scheme on packaging for Positec's Rockwell brand of power tools was likely to confuse consumers after lawyers for Black Decker compared DeWalt's trademark color scheme to McDonald's golden arches and Nike's swoosh.
"Everything DeWalt sells is yellow and black," said Black Decker's lead attorney on the case, Raymond P. Niro Jr. "We're very happy that the jury recognized the importance of protecting the trademark."
Niro said that Black Decker spent more than $100 million advertising and promoting the DeWalt brand, including its sponsorship of NASCAR driver Matt Kenseth's car, so that customers would recognize DeWalt tools on the shelves at Home Depot, Lowe's and other home improvement stores.
Black Decker developed DeWalt because of the perception that Black Decker was a consumer brand that made coffee makers and low-cost tools, Niro said. Professional construction workers who were embarrassed to be seen with Black Decker tools because their wives used their appliances at home embraced the DeWalt brand, he added.
Positec attorney Robert Theuerkauf said that Positec will likely appeal. It will continue to sell black and yellow packaged tools in the meantime, he said, though he added that he expects Black Decker to now seek an injunction that would force Positec to stop.
"While we obviously respect the jury's verdict, we don't believe this was a just result," Theuerkauf said. "This is far from a final resolution."
Positec made some Black Decker products in its Chinese factories in the 1990s but launched rival tool brand Worx and bought the Rockwell brand after Black Decker started making tools in its own factory in Positec's home city, Suzhou. Its owner, Don Gao, is a billionaire and the 189th richest person in China, according to Forbes.
kjanssen@tribpub.com
