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Identify the Product Configuration to be Protected

Posted by James Juo | Aug 14, 2023 | 0 Comments

Product configurations may be registered as a trademark on the Principal Register only upon a showing of acquired distinctiveness under Section 2(f). Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009) (“Configurations of products are not inherently distinctive and may only be registered as marks upon a showing of acquired distinctiveness.”); In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1283 (TTAB 2000) (requiring that “the primary significance of the product configuration[] in the minds of consumers is not the product but the producer”); see also Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000) (“even the most unusual of product designs – such as a cocktail shaker shaped like a penguin – is intended not to identify the source, but to render the product itself more useful or more appealing”). Product packaging, on the other hand, can be inherently distinctive.

An applicant's burden to establish acquired distinctiveness is “heavier” when it involves product configurations. In re Ennco, 56 USPQ2d at 1284 (finding evidence of seven to seventeen years of use was insufficient to establish acquired distinctiveness); see also Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988) (party seeking to establish acquired distinctiveness of product design bears “unusually heavy burden”).

In assessing acquired distinctiveness for product configurations, the following are considered: “(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.” Converse, Inc. v. Int'l Trade Comm'n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018).

When seeking a trademark registration for product configuration, it is important that the application show or describe the salient aspects of the product configuration sought to be protected.

“Flexible Wings”

Exhart Environmental Systems sells garden decor products called “WindyWings” having “patented springed-wing designs.” See https://exhart.com/pages/windywings.

In evaluating whether “flexible wings” on non-metal garden stakes had acquired distinctiveness, the TTAB found that “the application's drawing . . . shows what appear to be stationary wings, while the application's description of the mark and identification of goods do not mention wings at all.” In re Exhart Environmental Sys., Inc., Ser. No. 90006864 (TTAB Aug. 8, 2023).

Nothing in the drawing of the mark or its description indicates that the wings are flexible or intended to move. Thus, even if Applicant had established consumer recognition of the product's “flexible wings,” that would not by itself support registration of “a three-dimensional configuration of a non-metal garden stake in the shape of a songbird” or “decorative garden accessories, namely, figurines of plastic sold wholesale.” Applicant would have had to show instead that consumers associate “the shape of a songbird” (as depicted in the application's drawing) with Applicant, and it failed to do so. In re OEP Ent., Inc., 2019 USPQ2d 309323, at *16-17 (TTAB 2019) (rejecting claim of acquired distinctiveness, stating “[i]n the product design context, evidence of acquired distinctiveness ‘must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general … Applicant does not address the other elements of the applied-for mark, or claim that the mark as a whole has acquired distinctiveness.'”) (citations omitted); In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (“The evidence must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.”) (citing Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.11) (1982)); In re Koninklijke Philips Elec. N.V., 112 USPQ2d 1177, 1180 (TTAB 2014).

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          Because Applicant does not seek a registration covering “flexible wings,” Applicant's advertising instructing consumers to “look for the flexible wings” does not show that the mark Applicant seeks to register has acquired distinctiveness. . . . Here, as we have pointed out in the past, “advertising that touts a product feature for its desirable qualities and not primarily as a way to distinguish the producer's brand is not only not evidence that the feature has acquired secondary meaning, it directly undermines such a finding.” In re Ennco, 56 USPQ2d at 1285 (quoting Thomas and Betts Corp. v. Panduit Corp., 65 F.3d 654, 36 USPQ2d 1065, 1071-72 (7th Cir. 1995)).

          As for Applicant's emphasis on product images in its advertising and promotion, that is not enough by itself. In re OEP, 2019 USPQ2d at *23 (rejecting claim of acquired distinctiveness where advertisements “do nothing to encourage readers to associate the shape of the umbrella with Applicant”); Stuart Spector Designs, 94 USPQ2d at 1572 (“advertisements must show promotion of the configuration as a trademark”). Furthermore, as revealed in Applicant's specimen, . . . the product is clearly referred to as “WindyWings,” a literal mark in which the capital “W”s signal, and the surrounding context indicates, that the product's name/mark is “WindyWings.” July 6, 2022 Request for Reconsideration TSDR 23, 25, 31, 41, 70, 75. In re Mogen David Wine Corp., 372 F.2d 539, 152 USPQ 593, 595 (Fed. Cir. 1967) (“While a decanter bottle of wine is featured, there is nothing to indicate that the container has been promoted separate and apart from the word mark ‘MOGEN DAVID.' We are unable to find a single reference to the container itself.”); In re The Ride, LLC, 2020 USPQ2d 39644, at *10 (TTAB 2020) (“The proposed [tap dancing motion] mark is not Applicant's main identifier of the source of the services (THE RIDE is) … and consumers would not be pre-disposed to view the tap dance as a mark.”); In re Edward Ski Prods. Inc., 49 USPQ2d 2001, 2005 (TTAB 1999) (“only the word mark THE MASQUE has been used in the manner of a trademark”).

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[A]s in a number of analogous product configuration cases, Applicant's long-term use of the proposed mark is not sufficient to prove acquired distinctiveness. In re Change Wind, 123 USPQ2d at 1468; In re Koninklijke Philips, 112 USPQ2d at 1186 (for product designs, “evidence of five years' use considered alone is generally not sufficient to show acquired distinctiveness”); Stuart Spector Designs, 94 USPQ2d at 1554 (“even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness” for product configurations).

          Nor is the sales success WindyWings has enjoyed persuasive. In re Change Wind, 123 USPQ2d at 1468; Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1516 (TTAB 2017) (“while sales volume figures may demonstrate the growing popularity of the products, mere figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source”) (quoting Stuart Spector Designs, 94 USPQ2d at 1572); In re ic! berlin brillen GmbH, 85 USPQ2d 2021, 2024 (TTAB 2008) (“it is well settled that even compelling sales and advertising figures do not always amount to a finding of distinctiveness” in product configuration cases). The years of use and sales reflect the popularity of the product, but, given the record as a whole, do not persuade us that consumers view the product configuration as a mark.

The TTAB concluded that consumers would focus on other matter for source indication and would not perceive the product design as a source indicator.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.

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