Tuesday, April 15, 2014

Machine Stand Configuration Lacked Acquired Distinctiveness, Says TTAB

The Board affirmed a refusal to register the product configuration shown below, for stands for industrial stirring machines, finding that applicant had failed to establish acquired distinctiveness under Section 2(f). The lack of "look-for" advertising calling attention to the "Z" shape was a major factor in the Board's decision. Netzsch-Feinmahltechnik GmbH, Serial No. 79100238 (March 25, 2014) [not precedential].

We know from Wal-Mart v. Samara Bros. that a product configuration cannot be inherently distinctive. To merit registration, the purported mark must have achieved acquired distinctiveness. In support of its Section 2(f) claim, applicant submitted marketing materials, advertisements and articles from trade publications, a declaration from a company representative, ten customer statements, and a copy of its registration for the mark ZETA.

The Board observed that, when prompted to look for the "Z" shape in applicant's design, one can recognize it, but nothing in applicant's marketing materials calls attention to the letter "Z" in any explicit way. The company declaration averred that the configuration had been in use since January 1997, and that applicant's products garnered a 35 to 40 percent share of the relevant market. But applicant's evidence did not show promotion of the specific stand configuration embodied in the applied-for mark, as opposed to touting the superiority of applicant's products in general.

The customer's declarations stated that they associated the alleged mark with applicant, but the declarations were insufficient in number to support a finding that the configuration serves as a trademark, particularly in view of the lack of look-for advertising. In short, the Board was "simply not persuaded by these statements that applicant has managed to create consumer recognition of this design as a source indicator."

The trade articles established that applicant is an industry leader, but lacking was any mention of the configuration of the goods, or that consumers associated the Z-shaped stand with applicant's products. These publications gave the Board no reason to conclude that applicant or its competitors use their product shapes as trademarks.

Finally, applicant's ownership of a registration for the word mark ZETA was of no help. Nothing in the record would lead one to conclude that the mark ZETA represents the same source indicator as the "fairly obscure, largely unmentioned shape of [applicant's] industrial milling stand."

Concluding that applicant had failed to establish acquired distinctiveness, the Board affirmed the refusal to register under Sections 1, 2, and 45 of the Trademark Act.

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TTABlog comment:  Zzzzzzzzzzzz! Actually, this opinion was not that soporific. Only one Z.

Text Copyright John L. Welch 2014.


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