Tuesday, April 17, 2012

Section 2(f) Evidence for Backpack Design Falls Short, Says TTAB

The Board sent Applicant CellCorp packing by affirming a refusal to register the product configuration shown below, for "backpacks," finding that CellCorp had failed to prove acquired distinctiveness under Section 2(f). The mark comprised the backpack, water bottle, and flashlight, and three mesh pockets. In re CellCorp USA, LLC, Serial No. 77860793 (March 28, 2012) [not precedential].

Of course, under Wal-Mart, a product design cannot be inherently distinctive, and is registrable only upon a showing of acquired distinctiveness. The 2(f) burden is a heavy one for a product configuration.

Examining Attorney W. Wendy Jun maintained that the applied-for mark is made up of common elements found in many backpacks and is not a unique design. Moreover, she contended that CellCorp's sales and advertising figures fail to show any degree of consumer recognition. She pooh-poohed its customer declarations as being directed to the marketing concept of a combination backpack, water bottle, and flashlight, rather than the trademark significance of the configuration. And she discounted three retail buyer declarations because the declarants had "superior knowledge" about the goods.

CellCorp's evidence showed that it sold more than 4 million backpacks for some $41 million since 2002, it spends about $50,000 per year on advertising, and its goods appear in major "big box" stores. Three declarations from retail store buyers and 38 consumer declarations identified applicant as the source of the backpacks.

The Board, however, found this evidence unconvincing. CellCorp's use of the configuration since 2002 is not "conclusive or persuasive considering the nature of the subject matter sought to be registered, regardless of the consumer declarations." The sales in units and dollars indicates commercial success, but not recognition of the configuration as a trademark. Moreover, there was no evidence putting the sales figures in context with those of other backpack manufacturers. And there was no "look-for" advertising pointing out that the combination of elements is exclusively associated with CellCorp.

In fact, the advertisements submitted by CellCorp undercut the consumer declarations, which refer to the advertising, yet the advertising merely displays the configuration as the product being sold, with no reference to its trademark significance. These form declarations do not explain what the declarants understand the trademark to be, or how they concluded that the combination of elements forms a trademark. "In other words, the declarants did not state their own knowledge; rather, they simply concurred in the conclusion to which they were [led] by applicant."

The buyer declarations were more probative, since buyers presumably have experience in identifying a product configuration that functions as a trademark. However, the buyers did not explain how they reached the conclusion that Applicant's product configuration functions as a trademark. "[L]ike the customer declarations, we find that the buyers concurred in the conclusion to which they were [led] by applicant."

Finally the Board noted the lack of media recognition of the purported trademark, as well as the lack of evidence of an industry practice that regards product configurations as trademarks.

And so the Board affirmed the refusal to register on the ground of lack of acquired distinctiveness.

TTABlog comment: Boy, is it difficult to get a product configuration mark past the Board, or what? How many product designs can you think of that passed Board muster in recent years? The Baldwin keyhead. The Cartier watch. The "James Bond" handgun. Any others?

Text Copyright John L. Welch.


At 9:51 AM, Anonymous Anonymous said...

I'm thinking not many and reducing trademarks value from a brand enforcement and protection standpoint. Hard to recommend that a client file for one at this point.
A lot more expensive but a lot simpler to file for a design patent if you want to protect product design or at least have a claim of such.
Also, probably better strategically not to have filed a trademark application and create a record of refusal.
Seems to me that the PTO is forgetting their role. They are not federal judges ruling on the validity of a design trademark. They are government bureaucrats whose role is to register trademarks unless there is a valid reason to do so. We are in a period where they are not fulfilling their role in my opinion.

At 10:14 AM, Blogger John L. Welch said...

I disagree. I think product designs should be protected by design patent, not trademark law, except in the extraordinary case. Design patents are not that expensive to get, particularly once one figures in the cost of an attempt to register under 2f.

The fact that the Board is tough on product configurations doesn't mean that Examining Attorneys are. I wonder what percentage of product configuration applications are approved by the EA and then registered?


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