Wednesday, August 04, 2010

TTAB Reverses Refusal to Register Cartier Watch Design, Finding 2(f) Evidence Sufficient

The Board reversed a refusal to register the product configuration mark shown immediately below, for watches, finding that Applicant Cartier's evidence was sufficient to establish acquired distinctiveness under Section 2(f). Survey results, a prior court decision, sales figures, media coverage, and Cartier's two prior registrations for similar design convinced the Board of the subject mark's registrability. In re Cartier N.V., Serial No. 77227767 (July 30, 2010) [not precedential].

The Board first observed that Cartier's rights "rest on the distinctiveness of the entirety of that design - not merely the sum of the protectability of its individual features." Cartier disclaimed "the Arabic number 12, the three dials on the face of the watch, and the hand on the face and the dials of the watch."

Cartier submitted the results of a confusion survey from another litigation. "A high percentage of respondents erroneously identified the knock-off watch as coming from Cartier." The Board found this to be "powerful evidence" under Section 2(f). Moreover, the acquired distinctiveness of Cartier's "Pasha" line of watches was confirmed in another litigation.

Substantial sales figures, numerous national advertisements,and unsolicited media articles also supported Cartier's 2(f) claim.

Finally, the existence of Cartier's registrations for the two design shown below was another factor in its favor.

These two prior registrations depict and claim substantially similar watch configurations. The current Trademark Examining Attorney has not made the argument that these earlier registrations issued in error. Yet consistency and logic make it difficult to argue that the instant set of seven elements is not distinctive when somewhat smaller subsets of five or six of precisely the same elements were deemed distinctive several years ago. If we were to affirm this refusal, applicant could well be handicapped in its efforts to deal with the threat of future knock-off artists after having gotten tripped up by a registration system that proved to be both unpredictable and inconsistent.

And so the Board reversed the refusal.

TTABlog comment: WYHRR? Would you have refused registration based on this record?

Text Copyright John L. Welch 2010.


At 6:30 AM, Anonymous Rob said...

Yes, I would have refused registration.

The mark isn't too similar to those depicted in the previous registrations.

The watch hands are the only part of the applied-for mark that's sufficiently similar to the prior registrations, and those registrations explicitly disclaim watch hands.

Since when does an examiner need to argue that prior registrations were invalid? The Board fails to explain its unexpected interest in consistency of examination, after countless prior decisions pointing out that each application is examined on its own unique record, and that determinations by previous examiners set no precedent.

At 7:00 AM, Anonymous Paul Keating said...

"Cartier submitted the results of a confusion survey from another litigation. "A high percentage of respondents erroneously identified the knock-off watch as coming from Cartier."

I would love to see that particular evidence. It would seem important if the customers were presented with physical watches and asking them if they thought both came from Cartier - particularly since the watch would have had the brand name appearing on the front and back.

I think the 2(f) standard has become so watered down that it results in absolutely silly trademarks becoming registered. We all tend to think it will not harm us since we think of our own client's needs first. However, the tm registry is becoming poluted (IMO) with "marks" that should never have been registered. This impacts our clients in the long-run.

Because a TM is an exception to the 1st Amendment perhaps there is reason to have the standing criteria reduced or eliminated so as to allow for some form of public comment. (that should raise alarms).


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