Precedential No. 39: Toothbrush Base Design Lacks Acquired Distinctiveness, Says TTAB, Affirming Refusal

The Board affirmed a refusal to register the configuration of the "base assembly" of an electric toothbrush (depicted below), ruling that applicant's evidence of acquired distinctiveness was inadequate. Although applicant's sales figures were "not insubstantial," the absence of detailed information regarding advertising expenditures and the lack of "look-for" advertising were major reasons for the evidentiary failure. In re Koninklijke Philips Electronics N.V., 112 USPQ2d 1177 (TTAB 2014) [precedential]

As we know, product configurations cannot be inherently distinctive. Applicant sought registration under Section 2(f), contending that its prior registration of a similar mark (Rule 2.41(b)), its long and continuous use of the applied-for mark, high sales figures, and evidence of infringement of its mark by competitors constituted a prima facie showing of acquired distinctiveness. The Board, however, agreed with Examining Attorney Dannean J. Hetzel that applicant's evidence was insufficient.

As to applicant's prior registration, because it had been cancelled it could not serve as the basis for acquired distinctiveness.

Proof of five years of continuous and exclusive use of a mark may be accepted to establish a prima facie case under Section 2(f), but it is generally not enough when a product design is at issue. Here, applicant established more than ten years of use of the alleged mark, with "not insubstantial" sales of the base assembly product (between three and five million units per year, for revenues of between $91 and $108 million for the years 2006-2012). But high sales figures do not always mean that a mark has acquired distinctiveness because "they are not probative of purchaser recognition of a configuration as an indication of source."

This is especially true given Applicant’s lack of submission of advertising expenditures identifying types of media through which its goods are advertised and attaching typical advertisements for Applicant’s goods, which Trademark Rule 2.41(a) indicates should be provided, so that we may determine the nexus, if any, between the sales success and advertising efforts and Applicant’s product design.

The crucial question, of course, was whether consumers will perceive the product design as a source indicator: i.e., will they associate the design with a single source? "Look-for" advertising "may be particularly probative" on that issue. Advertising that merely depicts a product or touts a feature, however, does not qualify.

Here, there was no evidence of "look-for" advertising. Applicant submitted advertising and packaging of three of its competitors who depicted applicant's base assembly in order to sell replacement brushheads "designed to fit" applicant's base unit, but that evidence did not demonstrate that applicant's base assembly design functions as a source indicator.

Finally, applicant's evidence of infringement was not helpful because "[c]opying is only evidence of secondary meaning if the defendant's intent in copying is to confuse consumers and pass off his product as the plaintiffs." The depiction of applicant's product in comparative advertising does not show an intent to copy and therefore this evidence was not probative of acquired distinctiveness.

Having considered all the evidence, the Board affirmed the refusal.

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TTABlog comment: The Board notes that "secondary meaning" and "acquired distinctiveness" are sometimes used interchangeably. But I think "secondary meaning" should refer only to word marks, since only words have "meaning." What do you think?

Text Copyright John L. Welch 2014.