Thursday, December 02, 2010

Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive

A punster might say that Chevron simply ran out of gas in its attempt to register the shape of its "pole spanner sign" (shown below) for "vehicle service station services and automobile maintenance and repair services." The Board agreed with Examining Attorney Odessa Bibbins that the design comprises non-distinctive trade dress that has not acquired distinctiveness. In re Chevron Intellectual Property Group LLC, 96 USPQ2d 2026 (TTAB 2010) [precedential].

Inherent Distinctiveness: The Board applied the CCPA's Seabrook test to determine whether Chevron's spanner design is inherently distinctive trade dress. The photos immediately below shows "how consumers encounter the pole spanner design sought to be registered."

The Examining Attorney submitted photos of pole spanner signs from other service stations, maintaining that Chevron's design is a "mere refinement of a commonly adopted and well known form of ornamentation."

Chevron argued that its sign is distinctively different in its "three-dimensional, six-sided shape," and creates a commercial impression separate from any other matter on the pole spanner.

The Board, however, found that the Examining Attorney's evidence "establishes that pole spanners utilize common geometric shapes."

"[N]othing in the record leads us to conclude that consumers would perceive and rely on applicant's pole spanner design as an indication of source, absent a showing of acquired distinctiveness. distinctiveness. As shown by the photographs of service stations in the record, prospective consumers would be drawn to service stations by other indicia, such as the use of prominent word marks and logos. *** When consumers enter a service station, they will likely perceive the pole spanner designs as part of the gasoline pump, and as a means for displaying word marks and logos; and because the spanners are in common geometric shapes, they are thus less likely to stand out as distinctive elements of the overall pump ornamentation. [Too many trademarks spoil the trade dress broth? - ed.]

The Board therefore found that, under the third and fourth Seabrook factors, the subject design is a mere refinement of a common form of ornamentation that does not create its own commercial impression. In sum, it is not inherently distinctive.

Acquired Distinctiveness: Chevron pointed out that it has used the subject design since 1988 at about 8,000 gas stations across the country, which were visited 467 to 667 million times in 2007-2008. [But how many of those were just for purposes of using the restrooms? - ed.] The Examining Attorney pointed out that, in the record evidence, no mention is made of the specific design features that Chevron claims would be recognized by consumers.

The Board observed that the amount of evidence necessary to establish acquired distinctiveness varies with the nature of the mark and its manner of usage. Here, because the subject design is a mere refinement of a commonly used design, "applicant has a relatively heavy burden for establishing acquired distinctiveness."

Even assuming that Chevron's stations are highly successful, that success does not itself demonstrate that the spanner design is perceived as a source indicator. [Doh! - ed.]. Furthermore, Chevron did not offer any advertisements promoting the design as a source indicator, nor any evidence to show that its customers view the design as a mark. [The Board reviewed and dismissed various documents offered by Chevron relating to its brand image because they failed to refer specifically to the effect of the subject spanner design].

And so the Board deemed Chevron's evidence insufficient to establish acquired distinctiveness under Section 2(f).

TTABlog comment: Before reading this decision, I thought a pole spanner was some kind of European wrench.

Text Copyright John L. Welch 2010.


At 10:27 AM, Anonymous Josh said...

Google and a Google image search suggest that a "pole spanner" is, indeed, a type of wrench. Needless to say, keep safe search ON.

At 1:23 PM, Blogger Ed Wrath said...

Wonder if survey evidence would have helped here. Nevertheless, I think that's a lot of customers and dollars to just brush aside a 2(f) consideration, but then again when isn't the TTAB completely result driven?


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