Thursday, October 18, 2012

TTAB Affirms Refusal to Register Handwheel Design Feature Due to Lack of Acquired Distinctiveness

Despite Applicant's claim of forty (40) years of use, the Board affirmed a refusal to register the product design feature (a gray metallic ring) shown below, for "machine elements, namely, handwheels," on the ground that the feature lacks acquired distinctiveness under Section 2(f). Weak sales figures, lack of "look-for" advertising, and lame declarations from distributors failed to carry Applicant over the high 2(f) hurdle faced by a product configuration mark. In re Elesa S.p.A., Serial no. 77782897 (September 28, 2012) [not precedential].

Of course, under Wal-Mart a product configuration mark can never be inherently distinctive. Moreover, an applicant must meet "a heavy burden in establishing the distinctiveness of a product design."

Applicant claimed continuous and exclusive use of the mark for 40 years, and provided sales and advertising figures, six declarations from distributors, product literature, and copies of Italian court decisions.

The Board observed that, for a mark that is not inherently distinctive because of its nature, evidence of five years' use is not generally sufficient.

Applicant claimed total sales of at least 2.5 million dollars since 1972, spending on average $27,000 per year on advertising. However, it was not clear what portion of the sales occurred in the USA, nor how the advertising dollars were used. Nor was it clear that these sales and advertising dollars related to all of Applicant's products or just those embodying the subject feature.

Applicant's website and literature evidence did not draw attention to the purported mark but instead merely displayed the product. Applicant did refer to the "beauty" or "customizing" provided by the ring, and called it an "Elisa Original Design," but customers would likely view the gray ring as simply a product feature, not a trademark.

The declarations from distributors were flawed: only one identified the company for which he worked and none revealed the declarant's position nor their experience in the industry. Nor did they refer specifically to the gray ring.

Evidence of third-party designs submitted by Applicant was counter-productive because it showed other handwheels in gray and metallic colors.

The Italian court decisions concerned copying of the gray ring by others, but foreign decisions are not "controlling," and furthermore copying may result merely from a desire to exploit a desirable product feature rather than an intention to confuse consumers as to source.

And so the Board concluded that Applicant's gray wheel design feature lacks acquired distinctiveness, and it affirmed the refusal to register under Sections 1, 2, and 45 of the Act.

Text Copyright John L. Welch 2012.


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