Friday, February 22, 2008

Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design

The Board affirmed a refusal to register the product configuration mark shown below for "spectacles, sunglasses," finding that Applicant had failed to prove acquired distinctiveness. The alleged mark comprised three "fingers" located near the earpiece hinge and resembles an "asymmetrical fork." In re ic! berlin brillen GmbH, 85 USPQ2d 2021 (TTAB 2008) [precedential].

Applicant sought registration under Section 2(f), apparently recognizing that a product shape cannot be inherently distinctive. It pointed to five years of use, sales of more than 40,000 units, and marketing expenditures of $115,000 in 2006 alone. Applicant submitted photographs of celebrities wearing its eyewear, as well as ten "uniformly worded customer declarations from opticians" claiming that the design serves as a source indicator and that customers as for the eyewear by the earpiece design.

Examining Attorney Amy Guerin pointed to the paucity of evidence that the ultimate purchaser would view the design as a source indicator. She noted the lack of "look for" advertising promoting the design as a trademark.

In response, Applicant asserted (without evidence) that eyewear manufacturers "use the eyepiece to display their trademarks."

The Board was not persuaded that the alleged mark has become distinctive of Applicant's eyewear, the "chief reason" being the lack of evidence of promotion of the mark as a trademark.

"While the earpiece design is visible on the eyewear shown in applicant's print advertisements and Internet web pages, and in the celebrity photographs of record, there is nothing to indicate that the ultimate purchasers would view this particular feature as anything more than a component of the eyeglass/sunglass frame."

The declarations from opticians are entitled to "some weight," but this relates to only an "extremely small number of the purchasing public." Applicant's sales and advertising figures are "not especially impressive." Applicant failed to provide information regarding the size of its sales relative to competitors. Sales of 40,000 units in five years would surely represent a small portion of total eyewear sales. Moreover, any popularity of Applicant's goods may result from features of the eyewear that are particularly desirable (like its "patented hinges").

Although five years' of continuous and substantially exclusive use may serve as prima facie evidence of acquired distinctiveness, the language of Section 2(f) is permissive. Under the facts of this case, the five years of use is "insufficient to establish acquired distinctiveness."

The Board therefore affirmed the refusal to register under Section 1, 2, and 45.

Text Copyright John L. Welch 2008.


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