Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

The Board affirmed the USPTO's refusals to register the product configuration marks shown below, for "watches, wristwatches," on the ground that the drawings were unacceptable for two reasons: (1) they include functional elements, and (2) they include elements that have not acquired distinctiveness. In other words, certain of the elements shown in solid lines should have been depicted in dotted or broken lines because they lack trademark significance. In re Audemars Piguet Holding SA, Serial Nos. 90045780 and 90045814 (January 2, 2025) [precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant Audemars Piguet described the marks as consisting of 12 specific elements as to the first design, but only nine of the 12 as to the second design. The Board noted that "[n]either refusal is based on lack of acquired distinctiveness of the entire designs or on the functionality of the entire designs." Instead, they are based on the applicant’s refusal to comply with Examining Attorney Taryn Smith's requirement that the drawings be revised.

Applicant argued that requiring the application drawing "to depict less than the entirety of a design in dotted lines is legally unsupportable." The Board disagreed. Rule 2.52(b)(4), for example, specifically provides for use of dotted or broken lines in a drawing to depict any matter that is not claimed as part of a mark. In Water Gremlin, the CCPA affirmed a drawing requirement that the functional elements of a proposed mark be shown in dotted lines (combination of a design of a compartmented container with a handle with the words SINKER SELECTOR depicted upon a transparent lid).

The USPTO may register only marks that satisfy the statutory criteria, not marks that partially do and partially don’t satisfy them. And one criterion for registration on the Principal Register is that the proposed mark is distinctive. Drawing requirements plainly advance that obligation by providing a means to exclude unregistrable matter from a mark or design that combines matter that is registrable with matter that is not.

The functionality-based drawing requirement: The Examining Attorney maintained that all of the elements except the octagonal bezel with eight hexagonal screwheads and the pattern covering the back of the watch face are functional. The Board agreed only as to the circular watch face element: "[w]here . . . the evidence overwhelmingly demonstrates widespread use of a design feature an applicant claims is a part of its trade dress, that feature is functional." As to the other elements, although each may have a function, the Office's proof of de jure functionality fell short.

In short, as to these other features, the evidence fails to show that the particular shape or design in the applications before us works better because of their configuration. E.g., In re R.M. Smith, Inc., 734 F.2d 1482, 1484 (Fed. Cir. 1984) (that a design element performs a function does not mean that the element is legally functional unless the degree of utility is such that the public needs to be able to use that element to compete effectively); see also In re Deister Concentrator Co., 289 F.2d 496, 502 (CCPA 1961) (“A feature dictated solely by ‘functional’ (utilitarian) considerations may not be protected as a trademark; but mere possession of a function (utility) is not sufficient reason to deny protection.”).

The acquired distinctiveness-based drawing requirement: Applicant did not provide sales figures but pointed to its extensive advertising and promotional efforts. However, the advertisements depicted many different combinations of elements, and there was no "look for" advertising that directed consumers to the specific elements claimed in the drawings here. Importantly, most of the watches also displayed one of Applicant’s word marks (e.g., AUDEMARS PIGUET and/or AP) on the watch faces, which "detracts from the potential for Applicant’s advertising to educate consumers to look to the design elements alone to identify source."

The common thread among the watches depicted in these ads appears to be the octagonal bezel and eight evenly-spaced screwheads within the bezel. Indeed, Applicant’s website has expressly touted that “[t]he octagonal bezel with its 8 hexagonal screws have become the collection’s trademark.”

The Board concluded that applicant proved acquired distinctiveness only as to the octagonal-shaped bezel and the eight hexagonal screw heads. It found the other claimed elements to be nondistinctive and incapable of indicating source, necessitating the drawing requirement that they appear in dotted lines.

Conclusion: The Board pointed out that the applications may not be re-opened to allow amendment of the drawings. See Trademark Rule 2.142(g), 37 C.F.R. 2.141(g) (permitting re-opening of an application after a decision on appeal only as to disclaimers under Section 6, 15 U.S.C. § 1056). [FOB Pam Chestek points out in her comment that such an amendment to the original drawing would be an material alteration of the mark and thus not allowed].

The Board therefore affirmed the Board affirmed the refusals to register.

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TTABlog comment:  So, applicant should have shown only the 8-sided bezel and 8-sided screw heads in solid lines. The other solid lines must be 86'd.

Text Copyright John L. Welch 2025.