Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusals to Register Fence Post Configurations

The Board affirmed two refusals to register the product configuration marks shown below, for "pre-assembled plastic fence panels," on the ground that the applicant failed to carry its "heavy burden" to prove acquired distinctiveness. In re Barrette Outdoor Living, Inc., Serial Nos. 85389360 and 85389763 (May 30, 2014) [not precedential]

Wal-Mart teaches us that product configurations can never be inherently distinctive. In order to achieve registration for a product configuration mark, applicant must prove acquired distinctiveness, and the burden is a "heavy" one. In re Ennco, 56 USPQ2d 1279, 1284 (TTAB 2000).

Applicant's evidence indicated that some three million units of the first product have been sold since 2004, for at least $130,600,000 in revenue, and applicant spent at least $1,300,000 on advertising for the products. As to the second product the numbers were similar. These products have been sold at such stores as Lowe's, Home Depot, True Value Hardware, and Ace Hardware.

Although it found these numbers impressive, the Board nonetheless found the evidence insufficient to show acquired distinctiveness. The figures may demonstrate the popularity of the products but they are "not probative of purchaser recognition of a configuration as an indication of source." There was no evidence showing a connection of either product's design and its source.

Applicant's advertising touted the measurements, material, color, and accompanying hardware for the fences, and referred to one configuration as "classic styling." A "classic styling" would likely be seen by customers as "typical" or "standard" and not as a source indicator. As to the other fence section, the advertising touted its "privacy" and "low maintenance," but did not highlight any of the features shown in the application drawing. And significantly, there was no evidence of any "look for" advertising.

Moreover the designs of the subject fence panels are not particularly unique. Website evidence depicted similar third-party designs, suggesting that applicant's use of its alleged marks was not substantially exclusive.

Despite applicant's use of these two alleged marks for more than ten years, the Board concluded that applicant had not met its heavy burden to establish acquired distinctiveness. And so the Board affirmed the refusals to register under Sections 1, 2, and 45 of the Trademark Act.

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TTABlog note:  For sure, not many product configurations make it past the Board.

Text Copyright John L. Welch 2014.