Precedential No. 10: TTAB Affirms Refusal to Register Handbag Shape: Generic and (Alternatively) Lacking Acquired Distinctiveness

The Board has re-designated this opinion as precedential. In a 51-page opinion, the Board affirmed a refusal to register the product configuration shown below, for "handbags," finding the design to be generic and, alternatively, lacking in acquired distinctiveness: "Handbags embodying the proposed mark are so common in the industry that such product design is not capable of indicating source and ... Applicant's proposed mark is at best a minor variation thereof." The applicant's alternative Section 2(f) claim failed due in part to the same lack of exclusivity of use. In re Jasmin Larian, LLC, 2022 USPQ2d 290 (TTAB 2022) [precedential] (Opinion by Judge Martha B. Allard).

The Board noted that the issues at hand, genericness and acquired distinctiveness, are interrelated in that third-party use of the same or a similar design affects each determination.

Genericness: Generic product designs cannot be registered. See, e.g., Stuart Spector Designs, Ltd. v. Fender Musical Instruments, 94 USPQ2d 1549, 1555 (TTAB 2009) (guitar shape). "[C]ourts exercise particular caution when extending protection to product designs because such claims present an acute risk of stifling competition." A design may be so common in the industry that it cannot identify a particular source, in which case registration should be refused "on the ground that the proposed mark fails to function as a mark." [Genericness may be thought of as a form of "failure-to-function" - ed.]. There was no dispute that the genus at issue is "handbags" and the relevant consumers are the general public - i.e, ordinary consumers who purchase handbags. The issue, then, was the primary significance of the proposed mark.

Applicant has sold its "Ark" bag since January 2013, with sales increasing sharply in 2017. The evidence included third-party bags sold prior to 2013, commentary regarding handbag designs, articles about fashion, the applicant's own acknowledgement that its design is a copy of a common design, Internet postings, and third-party handbags sold after the applicant's Ark bag was introduced but before it became popular. "The record shows that third-parties offered identical or nearly identical handbags for sale in the United States prior to Applicant's first use date."

prior handbag

Reviewing the USPTO's submissions in detail, the Board found the evidence of third-party use to be "substantial." The Board rejected various objections made by the applicant to the evidence, including hearsay and reliance on non-USA sources. It found particularly probative the fact that "even Applicant acknowledged that the bag embodying the proposed mark is a reproduction of a common bamboo handbag design."

From this record, we find that handbags embodying the proposed mark are so common in the industry that such product design is not capable of indicating source and that Applicant’s proposed mark is at best a minor variation thereof. Our finding that the proposed mark is generic is an absolute bar to its registration on either the Principal or Supplemental Register.

Acquired Distinctiveness: In the interest of completeness, the Board also considered the applicant's claim that the subject product design has acquired distinctiveness. "Distinctiveness requires "substantially exclusive and continuous use of the mark in commerce." The burden to prove acquired distinctiveness is higher for a product configuration. 

The Board applied the Converse factors to make it determination. The applicant did not offer survey evidence nor any evidence of "look for" advertising. Its sales figures lacked information regarding market share. The applicant claimed that it has policed the "mark" but its proofs were indefinite and not probative. In view of the evidence of third-party use, the Board found that the Applicant "failed to demonstrate the 'substantially exclusive' use of the purported mark required by the statute." The evidence of favorable and unsolicited media attention was not enough to overcome the other evidence of record.

Conclusion: The Board affirmed the refusal to register on both grounds.

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TTABlogger comment: Rarely does a product configuration pass TTAB muster. I blogged some thoughts on this topic a few years ago [here], although I did not include a discussion of "genericness."

Text Copyright John L. Welch 2022.