Monday, July 06, 2009

TTAB Affirms Failure-to-Function Refusal of Folded Brochure as Service Mark

The Board said no to Applicant Kathy Sayah's attempt to register the shape and design of a folded brochure (shown below) as a service mark for advertising and printing services, because the brochure fails to function as a mark. The Board found the brochure to be not inherently distinctive and it deemed Sayah's proof of acquired distinctiveness to be insufficient. In re Sayah, Serial No. 76486273 (June 18, 2009) [not precedential].

Sayah's design consists of "the size and shape of folded printed materials finished to a size of approximately 2 inches by 4 inches; the location of a business name or picture on the front cover; the location of a map and a border of approximately one sixteenth of an inch on the back cover; the location of a product or a price list between the front and back cover. The name of the business and the map are not party (sic) of the design." For ease of reference, the Board called the alleged mark the "Folded Printed Material Design."

The Board first noted that in Two Pesos, the Supreme Court ruled that trade dress used in connection with restaurant services may be (and in that case was) inherently distinctive. But not all trade dress is inherently distinctive: it depends on the facts of the case and on whether consumers are "predisposed" to view the particular type of trade dress as a source indicator. Here, the Board concluded that the public was not so predisposed, and further that the trade dress was not inherently distinctive anyway.

In this case we conclude, without hesitation, that Applicant's Folded Printed Material Design is not the type of trade dress which relevant consumers are predisposed to view as a source indicator. See, e.g., In re Hudson News Co., 39 USPQ2d at 1923. We likewise conclude, without hesitation, that the Folded Printed Material Design is not inherently distinctive.

The elements of Sayah's alleged mark -- pocket-size, a name or picture on the cover, a map on the back, and a product or price list inside. -- are "extremely common" and appear in "many, if not most, advertisements or other printed material used by businesses in the travel, entertainment, and restaurant industry, or elsewhere." The proposition that purchasers will view this design as inherently distinctive is "not credible."

Moreover, these elements are so common that, in attempting to prove acquired distinctiveness, Sayah faced a "substantial, if not insurmountable burden."

Sayah claimed use of the design since 1994, distribution of more than 58 million brochures employing the design, display of the brochures in more than 500 hotel and motel lobbies, exposure of the design to more than 27,000 hotel employees and 50 million consumers, and expenditure of $540,000 to promote the design.

The Board, however, pointed to the lack of any evidence that would show "what impact ... these various activities have had on relevant consumers."

... we have no evidence, and certainly no direct evidence, that anyone perceives the Folded Printed Material Design as a source indicator for Applicant's services. This is especially important in a case, such as this one, where the alleged mark is so broadly and even vaguely defined. Accordingly, we find Applicant's evidence of acquired distinctiveness wholly insufficient under the circumstances of this case.

Sayah's use of the mark for 15 years has "little probative value" in view of the "broad description" of the design. The evidence, the Board concluded, falls "far short" of meeting the "especially high" burden of proof in this case.

And so the Board affirmed the refusal under Sections 1, 2, 3, and 45 of the Trademark Act.

TTABlog comment: One might consider Sayah's trade dress to be de jure functional and perhaps generic. But let's not pile on.

Sometimes when I'm bored in a meeting or a deposition, I fold a piece of paper into a cube (water bomb), or a bird, or a frog. Suppose one were to claim service mark rights in a folded origami frog that had advertising material printed on it? Registrable for advertising services?

Text Copyright John L. Welch 2009.


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