Product Designs Can Be Difficult to Trademark

by Bryan Cave Leighton Paisner
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In a single precedential ruling on March 30, 2018, the Trademark Trial and Appeal Board (TTAB) cancelled a federal trademark registration for a round-shaped product design, and also refused to register a federal trademark application for a pentagon-shaped product design. The round-shaped product design (shown below on the left) was registered by a first competitor for "a combined stop-turn-tail lamp," and the pentagon-shaped product design (shown below on the right) was applied for registration by a second competitor for "lights for vehicles." The case is Grote Industries v. Truck-Lite Co., LLC, Opposition No. 91196923 and Cancellation No. 92053498 (Consolidated) (March 30, 2018).

Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(5), states that a product design shall not be registered as a trademark if it “comprises any matter that, as a whole, is functional,” and the relevant case law holds that such a refusal to register is particularly appropriate “if [the product design] is essential to the use or purpose of the article or if it affects the cost or quality of the article.”" Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). In this proceeding, the TTAB found that a utility patent for the product and other evidence did not show the round-shaped product design to be functional.

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and the relevant case law also holds that a product design cannot inherently serve as a trademark by itself. Instead, a product design can be registered as a trademark only after it has acquired distinctiveness. Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 54 USPQ2d 1065, 1069 (2000). The TTAB cancelled the registration for the round-shaped product design and refused to register the application for the pentagon-shaped product design because the evidence did not show that either design had acquired distinctiveness for their respective lighting products.

To prove acquired distinctiveness, a showing of large quantities and/or dollars of sales (even $200 million of sales) by itself is typically insufficient. Instead, advertisements that highlight the product design as an indication of a source of the product can be used to prove acquired distinctiveness for the product design to serve as a trademark. Commonly referred to as "look-for advertising," such advertising tells consumers to "look for" the product design as an indicator of the source of the product.

To read the full TTAB opinion, click here

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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