Monday, September 29, 2008

TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal

There are two major hurdles to registering a product configuration as a trademark: functionality and nondistinctiveness. I wrote an article on this topic a few years ago, cleverly entitled, "Trade Dress and the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will." In the Board's latest product configuration case, Applicant Pelco Products, Inc. cleared the functionality hurdle, only to trip over the distinctiveness barrier. In re Pelco Products, Inc., Serial No. 78485818 (September 19, 2008) [not precedential].

Pelco sought to register the design or product configuration shown above for "brackets made of metal for attaching traffic signals to mast arms." The mark consists of the configuration of the bracket, and "resides in the contours of the opposing faces of the two members."

Functionality: Applying the four-part set out by the CAFC in Valu Engineering, the Board first examined several utility patent proffered by the Examining Attorney but was not persuaded that they demonstrate "that the shape of the proposed mark has practical or functional value." Pelco's advertising for the product did not tout the design for its "desirable, utilitarian qualities." The existence of alternative designs that "appear to work 'equally' well'" undercut the PTO's functionality argument. And there was no evidence that Applicant's design "results from a simple or cheaper method of manufacturing." In sum, the PTO failed to meet its burden of proving functionality, and the Board therefore reversed the Section 2(e)(5) refusal.

Distinctiveness: Product designs cannot be inherently distinctive; so said the Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). Pelco sought registration under Section 2(f), but the PTO found its evidence insufficient to prove acquired distinctiveness.

The Board noted that the burden to prove acquired distinctiveness "is heavier in this case because it involves product configurations." In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1283 (TTAB 2000). It reviewed Pelco's sales and advertising figures, and Pelco's 16 declarations from "independent distributors ... installers, and ... a contractor," but found them insufficient to established acquired distinctiveness. Although Pelco has used its design for more than twenty years,

"there is simply insufficient evidence that consumers view applicant's design as an indicator of the source of applicant's goods or that applicant has even encouraged consumers to consider the design as its trademark. The fact that applicant has sold and advertised its products with the design does not indicate that any consumers distinguish its goods based on the design."

The Board pointed out that "this is not a case where applicant has established that 'look for' advertising or promotion is not needed because there is an industry practice of using flourishes on brackets by manufacturers to distinguish their products." Compare In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) [shape of key head had acquired distinctiveness]. [TTABlogged here].

The Board therefore affirmed the refusal to register on the ground that the design is not inherently distinctive and lacks acquired distinctiveness.

Text Copyright John L. Welch 2008.


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