Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Monster Truck Body Ornamentation

The Board reversed a refusal to register the mark shown here, comprising a “truck cab body in the design of a fanciful, prehistoric animal,” for “entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions,” rejecting the examining attorney’s contentions that the design failed to function as a service mark and that the drawing of the mark was not a “substantially exact representation of the mark in use.” Applying the standard test for trade dress distinctiveness found in Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977), the Board found the mark to be unique and unusual, and therefore inherently distinctive. In re Frankish Enterprises Ltd., 113 USPQ2d 1964 (TTAB 2015) [precedential].

Failure to Function: The examining attorney maintained that the proposed mark would not be perceived as a source indicator for the services because it was merely “one of many interesting truck designs in which ... monster trucks appear,” and thus did not distinguish applicant’s services from those of others. He relied on the results of two Internet image searches for “monster trucks,” which yielded photographs of a number of trucks with various shapes and themes. The Board, however, pointed out that none of the trucks featured “unambiguous dinosaur or ‘fanciful prehistoric animal’ designs or themes.”

The Board observed that, although product designs cannot be inherently distinctive (Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 U.S.P.Q.2d 1065 (2000), product packaging trade dress can be. Moreover, under Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 23 U.S.P.Q.2d 1081, 1084 (1992), trade dress for services may be inherently distinctive. See In re Chippendales USA, Inc., 622 F.2d 1346, 96 U.S.P.Q.2d 1681, 1684 (Fed. Cir. 2010) (“Cuffs and Collars” costumes worn by dancers found to be trade dress that could be inherently distinctive for adult entertainment services.”) The Board found applicant’s proposed monster truck design to be “akin to the packaging of what is being sold.”

The question, then, was whether applicant's trade dress was inherently distinctive. The four-part test for determining inherent distinctiveness of trade dress was set forth in Seabrook v. Bar-Well:

[1] whether it was a ‘common’ basic shape or design,
[2] whether it was unique or unusual in the particular field,
[3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or
[4] whether it was capable of creating a commercial impression distinct from the accompanying words.

Professor McCarthy has observed that the parts of this test "are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in this market that one can assume without proof that it will automatically be perceived by customers as an indicator of origin." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 8:13 (4th ed. 2014)

The Board found that the examining attorney's evidence failed to show that applicant's "fanciful, prehistoric animal" design was either a common or basic design. Instead, it is "unique among the more than 100 monster trucks" uncovered by the examining attorney. "The Examining Attorney provided scant, if any, evidence that Applicant's truck is a 'mere refinement' of anything, let alone a 'commonly-adopted' and 'well-known form' in the monster truck field." The elements of applicant's design - "conveying the body of a dinosaur and adorned with other dinosaur elements, including horns, a protective shield and eyes bordered by scales" - are unique and make the design unlike those proffered by the examining attorney.

Moreover, the proposed mark creates a commercial impression separate from the words JURASSIC ATTACK that appear on the specimens of use, because the design is predominant. The words appear only on a small portion of the back of the truck, while the design elements encompass the entire truck cab. In short, the design is not mere "background" material for the words.

It is settled that a mark applied to a product can function "not only as ornamentation for the product but also as a mark for applicant's services." In other words, there is no prohibition against a trade dress mark being aesthetically pleasing. The Board observed that applicant's three-dimensional mark is "akin to the marks found registrable in Two Pesos (restaurant design), Red Robin (bird costume), Eagle Fence (colored wire in fencing) and similar cases," and not like the trade dress refused registration in Hudson News (newsstand motif), Chippendales (adult dancer costume), and File (bowling alley lighting).

The Board concluded that the examining attorney failed to set forth a "reasonable predicate" for his finding that the mark is not inherently distinctive or that it will not be readily perceived as a source indicator for applicant's services.

Mutilation: The examining attorney contended that the drawing in the application was not a "substantially exact representation of the mark in use," as required by Rule 2.51(a) because the specimens showed the mark appearing with the word JURASSIC ATTACK and other markings. The Board pointed out, however, that a background design may be registrable by itself if it is "distinctive or unique enough to create a commercial impression as an indication of source separate and apart from the remainder of the mark."

As noted above, the Board found that applicant's mark is "distinctive, unique and creates a commercial impression separate and apart from the word mark JURASSIC ATTACK." It is anything but "mere" background material. As to the additional markings (for example, stylized gills or stripes) that do not appear in the drawing, the Board found them to be merely "minor alterations" that "do not create a new and different mark creating a different commercial impression."

And to the Board reversed the refusals to register.

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TTABlog note: If someone with a similar looking truck drove it only backwards, would that result in reverse confusion?

Text Copyright John L. Welch 2015.