Some Thoughts on Why Product Configuration Marks Seldom Survive TTAB Scrutiny

Rarely do product configuration trademark applications survive TTAB scrutiny. Two major hurdles to registration stand in the way: the absolute bar of Section 2(e)(5) functionality and the requirement of acquired distinctiveness for product configuration trade dress. In 2004, I wrote an article reviewing these issues, entitled "Trade Dress and the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will." But putting aside the legal requirements for registration, let's look at the practical side.

The applicant who seeks to register a product configuration or a product feature as a trademark is often in the following position: it has a commercially successful product but doesn't have patent protection - whether because it never sought patent protection or was denied patent protection, or because the patent protection it obtained has expired. Trademark registration, with its potentially unlimited lifespan, seems an attractive possible avenue for filling this vacancy.

However, one of the reasons a product may have achieved commercial success is that the owner has advertised and promoted the benefits of the product over its competition. A successful product will invite imitation, and thus the question of protection arises. But the fact that the product has been touted for its supposedly superior qualities will come back to bite the applicant under the Morton-Norwich test. Seldom will an applicant be able to point to "look for" advertising that promotes the shape of the product as a source indicator. The Board will downplay the sales success of the product because the success could merely reflect the desirability of the product in light of its touted superior qualities, not an indication of consumers recognition of the product shape as a trademark.

On the patent side, a utility patent that claims the product features will be fatal to trademark registrability. Even if the advantages of the design are discussed only in the specification of the patent, that disclosure is treated as an admission against interest and probative on the issue of functionality. So an applicant who decides, now that its utility patent has expired, to seek trademark protection will likely be hoist with its own (patent) petard.

As to design patent protection, the expiration of a design patent does not preempt the applicant from obtaining a trademark registration for the product design. In fact, the CAFC in Morton-Norwich says (in dictum) that the design patent is presumptive evidence that the design is not functional. That position is wrong, due to the different standards for design patent functionality and trademark functionality, but there it sits. (See the TTABlog discussion of the umbrella case two days ago (here)).

In any event, the fact that trademark protection for a product design is often an afterthought leads, in my opinion, to the likelihood that an applicant seeking to register the product design as a trademark will trip over one or both of the hurdles to registration: the design will either be deemed to be functional in view of the applicant's own utility patent or its own promotional efforts, and/or it will fail to enjoy acquired distinctiveness due to the high standard applied to product shapes and the applicant's lack of "look for advertising."

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TTABlog comment: Not deep thoughts, I realize, but that's the best I can do.

Text Copyright John L. Welch 2019.