Friday, October 14, 2011

TTAB Affirms Refusal to Register Shape of Temperature Control Device due to Lack of Acquired Distinctiveness

Despite its use of the applied-for product designs for more than 60 years, a 70% market share, and some 20 million temperature control units sold, Applicant Johnson Controls failed to convince the Board that the designs (shown below) have acquired distinctiveness. And so the Board affirmed the refusal to register under Sections 1, 2, and 45. In re Johnson Controls, Inc., Serial Nos. 77612039 and 77612049 (September 27, 2011) [not precedential].

In case you couldn't tell, the mark on the left consists of the three-dimensional knob and display configuration, the bracket on top, and the rectangular shape of the device; the other mark consists of only the knob and display. [i.e., the portions shown in solid lines in the drawings].

Examining Attorney Douglas M. Lee maintained that the marks are not inherently distinctive and that Johnson failed to provide sufficient proof of acquired distinctiveness. Of course, under Wal-Mart v. Samara Bros., product design trade dress cannot be inherently distinctive. Registration requires proof of acquired distinctiveness, and the applicant has the burden to establish same. Moreover, under applicable Board precedent, an applicant "faces a heavy burden in establishing the distinctiveness of a product design."

Johnson alleged that it has used its marks since at least the 1940s and that it has a share of the market exceeding 79%. From 2000 to 2009, its sales exceeded $130 million and more than 20 million units were sold. Johnson contended that it has advertised and promoted its control units under the mark, and it provided product bulletins, catalogs, technical bulletins, and other materials.

The Board noted that the "most persuasive" types of evidence in a product design case are "look for" advertising and consumer declarations. Here, no such evidence was presented by Johnson.

As to the proof that Applicant did provide, the product bulletins describe the features of the devices, but do not "set any of the features apart, or tout them in such a way that they would be perceived as source-indicating features." The catalogs include photos of the devices but do not refer to any of the subject design features, and additional advertising and Johnson's website make no mention of any of the features but merely include a photograph of the device.

Moreover, based on the Examining Attorney evidence, the Board found that "round-shaped knob adjustments for controllers, display windows for reading temperature, and a square or rectangular-shaped device are not uncommon design features of temperature control devices."

The Board accorded little probative value to the self-serving statement of Applicant's declarant that customers recognize these features as source indicators, in the absence of "sufficient direct or circumstantial evidence corroborating the assertion." In short, Johnson's evidence of acquired distinctiveness fell short of showing "that consumers have been conditioned to perceive the particular combinations of design features claimed in each application as source-indicating trademarks."

The Board noted that it would need to see "a great deal more evidence (especially in the form of direct evidence from customers)" than that submitted by Johnson.

TTABlog comment: It's danged hard to get a product configuration past the TTAB. There have been a few during the life of this blog (the Walther "James Bond" pistol, the Cartier watch, and the Baldwin key head come to mind), but not many.

Text Copyright John L. Welch 2011.


At 10:18 AM, Anonymous Bob Klein said...

But long, long ago, Honeywell got trademark registration for its "Round" thermostat based, in part, on survey evidence showing (as I remember) 90% recognition and identification by name among electricians. The registration was later cancelled (Eco v Honeywell)due to the existence of an expired utility patent. But a survey would surely have served Johnson Controls well in this case.


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