TTAB Affirms Refusal to Register Muffler Configuration Due to Lack of Acquired Distinctiveness

Rarely does the Board find that a product configuration clears the hurdles of functionality and acquired distinctiveness to reach the registrability finish line. Here, the first hurdle was set aside because the Board declined to consider the functionality issue. Applicant Don Emler failed to clear the second hurdle. In re Don Emler, Serial No. 90688260 (May 13, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

Emler applied to register a product configuration for motorcycle mufflers, and particularly only "the slanted line at the connection between the canister portion of the muffler" and the outlet end cap, which Emler refers to as a "Slashcut" design. Emler sought registration of this single feature under Section 2(f), since a product configuration can never be inherently distinctive (Wal-Mart).

The Board observed that Emler's burden of proof to establish acquired distinctiveness "is particularly heavy where an applicant seeks to establish the distinctiveness of a product design, which consumers are predisposed to view as useful or appealing, not source-indicating."

The question, then, was whether the Slashcut or slanted line "has become distinctive to motorcycle consumers." The Board noted that, although the identified goods are limited to motorcycle exhaust components, the application does not include any limitation as to the type of motorcycle. "This broad scope is important here, because there are many kinds of motorcycles, ranging from scooters to high-performance racing motorcycles to off-road motorcycles." Therefore, the relevant consumers include all motorcycle riders and owners.

Emler claimed exclusive use of the Slashcut design element since 2005, with sales of about 15,000 units per year. "With almost twenty years of sales and no competitors using the same design, it is at least plausible that the proposed mark has become distinctive within its primary market segment."

Emler submitted several declarations from individuals engaged in motorcycle-related businesses, attesting that they recognize the Slashcut design as a source identifier. The Board found the declarations to be probative, but it saw "a theme running through all of Applicant’s evidence:" the evidence related to mufflers used primarily with off road or motocross motorcycles.

Applicant’s evidence may be somewhat probative of acquired distinctiveness within the off road and motocross motorcycle segment. The declarations are detailed and specific to each declarant, and the declarants are highly experienced persons within the off road and motocross communities. But therein lies the problem. Applicant’s evidence is limited to the off road and motocross market segment, but the Application is not. The Application identifies motorcycle exhausts more generally, and includes, therefore, street motorcycle exhausts, too. For this reason alone, we find Applicant has failed to show acquired distinctiveness for the proposed mark.

Furthermore, the slanted line or Slashcut "is likely just one example of a visible angled line somewhere on the exterior of the motorcycle. It is not a prominent feature, even of the muffler itself, and when viewed within the context of a motorcycle with many different parts, the challenge of proving acquired distinctiveness will be daunting."

The Board advised Emler that if he continues to pursue trademark protection for the proposed mark, he would have to present a substantially stronger record than he presented here. 

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TTABlogger comment: Should Emler file a new application limiting the identification of goods to mufflers for off-road and motocross motorcycles?

Text Copyright John L. Welch 2024.