Friday, August 23, 2019

Some Thoughts on Why Product Configuration Marks Seldom Survive TTAB Scrutiny

Rarely do product configuration trademark applications survive TTAB scrutiny. Two major hurdles to registration stand in the way: the absolute bar of Section 2(e)(5) functionality and the requirement of acquired distinctiveness for product configuration trade dress. In 2004, I wrote an article reviewing these issues, entitled "Trade Dress and the TTAB: If Functionality Don’t Get You, Nondistinctiveness Will." But putting aside the legal requirements for registration, let's look at the practical side.

The applicant who seeks to register a product configuration or a product feature as a trademark is often in the following position: it has a commercially successful product but doesn't have patent protection - whether because it never sought patent protection or was denied patent protection, or because the patent protection it obtained has expired. Trademark registration, with its potentially unlimited lifespan, seems an attractive possible avenue for filling this vacancy.

However, one of the reasons a product may have achieved commercial success is that the owner has advertised and promoted the benefits of the product over its competition. A successful product will invite imitation, and thus the question of protection arises. But the fact that the product has been touted for its supposedly superior qualities will come back to bite the applicant under the Morton-Norwich test. Seldom will an applicant be able to point to "look for" advertising that promotes the shape of the product as a source indicator. The Board will downplay the sales success of the product because the success could merely reflect the desirability of the product in light of its touted superior qualities, not an indication of consumers recognition of the product shape as a trademark.

On the patent side, a utility patent that claims the product features will be fatal to trademark registrability. Even if the advantages of the design are discussed only in the specification of the patent, that disclosure is treated as an admission against interest and probative on the issue of functionality. So an applicant who decides, now that its utility patent has expired, to seek trademark protection will likely be hoist with its own (patent) petard.

As to design patent protection, the expiration of a design patent does not preempt the applicant from obtaining a trademark registration for the product design. In fact, the CAFC in Morton-Norwich says (in dictum) that the design patent is presumptive evidence that the design is not functional. That position is wrong, due to the different standards for design patent functionality and trademark functionality, but there it sits. (See the TTABlog discussion of the umbrella case two days ago (here)).

In any event, the fact that trademark protection for a product design is often an afterthought leads, in my opinion, to the likelihood that an applicant seeking to register the product design as a trademark will trip over one or both of the hurdles to registration: the design will either be deemed to be functional in view of the applicant's own utility patent or its own promotional efforts, and/or it will fail to enjoy acquired distinctiveness due to the high standard applied to product shapes and the applicant's lack of "look for advertising."

Read comments and post your comment here.

TTABlog comment: Not deep thoughts, I realize, but that's the best I can do.

Text Copyright John L. Welch 2019.


At 10:26 AM, Anonymous Joe Dreitler said...

Maybe not deep thoughts, but accurate ones. The ‘90’s was the heyday for companies claiming trade dress in expired patent designs and it took the Supreme Court to finally end the madness because too many lawyers brought absurd lawsuits. Perhaps a new generation of businesses and trademark attorneys haven’t read those cases or the Supreme Court decision and those that followed from the various circuits for a few years after TrafFfix. They should. The PTO is right to be ultra conservative since we know that the reason lawyers advise clients to register non distinctive designs is to bully competitors for fear of expensive litigation to cancel a registration presumed valid and enforceable. Not every company wants to spend their time or has the money to fight a large bully using the trademark laws for anticompetitive behavior.

At 10:59 AM, Anonymous Anonymous said...

I agree with Joe; you might not consider them deep thoughts, but they are very useful. Despite the high hurdles you discuss, you still cover quite a few appeals of PTO refusals in this area. We can speculate as to why these cases are filed, but understanding these hurdles is key to properly advising clients on the proper protection of such matter. Moving this from an afterthought to a thoughtful up front strategy requires educating clients and a good understanding of the different options. Kudos for this and all of the knowledge you continue to bestow on your fellow trademark attorneys (and hopefully IP practitioners more broadly).


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