Despite 18 years of Sales, LED Configuration Lacks Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register the configuration shown below as a trademark for a "light emitting diode (LED) apparatus for lighting, incorporated into medical instruments," on the ground that Applicant Translite failed to prove that the design had achieved acquired distinctiveness. Trasnlite pointed to its 18 years of use of sales of the product but that alone was not enough, and its other evidence fell short of convincing the Board that the design merited registration. In re Translite, LLC, Serial No. 97925710 (July 10, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

"The mark consists of a three-dimensional configuration of a device consisting of a rectangular base that extends up to a curved top, resembling a sideways letter “C”. Below the “C” is a design of an eye with a line through it, and on the side of the device is a button. The features rendered in dotted lines are not claimed as part of the mark."

The Board observed that, "[u]nlike product packaging trade dress, which can be inherently distinctive, product configuration trade dress is not inherently distinctive because consumers are not predisposed to equate such configurations with particular sources: 'even the most unusual of product designs − such as a cocktail shaker shaped like a penguin − is intended not to identify the source, but to render the product itself more useful or more appealing.' Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 213 (2000)."

Considering Translite's Section 2(f) claim, the Board looked to the factors set forth in Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018)): "(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Translite submitted marketing materials for its "Veinlite EMS Pro"” product, a printout from its website, a declaration of its president, and declarations from four consumers, along with a purported “report” from the Society of Nuclear Medicine & Molecular Imaging. It averred that the subject product has been sold since 2006, but the Board observed that "[t]e length of time needed to acquire distinctiveness in the mind of the consuming public is proportional to the non-distinctiveness of the applied-for mark." It found 18 years of use to be insufficient, by itself, to establish acquired distinctiveness.

Translite has sold some 3,055 units per year for $1.61 million in annual revenue. It did not submit its advertising expenditures, nor did it indicate how many individuals accessed its website or attended its trade shows. The Board pointed out that sales figures for a product "are not probative of purchaser recognition of a configuration as an indication of source." Moreover, there was nothing that showed promotion of the subject configuration as an indicator of source. In fact, each image of the product includes the “VeinLite” mark in connection with the product.

"It is well-settled that, where, as here, a party’s advertising and sales data is based on materials and packaging in which the mark at issue is almost always displayed with another mark [e.g., 'Veinlite'], such data does not prove that the mark at issue possesses the requisite degree of consumer recognition.” ProMark Brands Inc. v. GFA Brands, Inc., Opp. No. 91194974, 2015 TTAB LEXIS 67, at *43 (TTAB 2015).

Translite did not submit survey evidence regarding consumer recognition. The declarations, identically worded, stated that the declarant had been a customer of Translite's product and "instantly" recognized the product as emanating from Translite. "It is my understanding that product configuration comes solely from Translite and has high quality and performance."

The Board found the declarations "of minimal probative value." for several easons. First, "the testimony of four consumers out of an alleged 55,000-plus customers over an eighteen-year period is not convincing to prove widespread recognition of Applicant’s applied-for mark." Second, "the consumer declarations are fill-in-the blank forms that were clearly drafted by someone other than the declarants." And third, "it is unclear whether the declarants considered the functional elements of the product configuration (i.e., the vein holder and LED elements) in rendering their testimony that they recognize Applicant as the source of the product configuration." [The dashed lines in the drawing represent functional, unclaimed features - ed.].

Finally, the "report” that Translite submitted "is largely dedicated to identifying and praising Mr. Mullani for his professional accomplishments. While the “report” does identify Mr. Mullani as the “Inventor of Veinlite,” there is no reference to Applicant’s applied-for product configuration mark or how the public views the configuration."

At bottom, the critical question is not the length of Applicant’s use, the dollar amount of its sales, or the extent of its advertising; it is the effectiveness of these efforts in “creating a consumer association between the product configuration and the producer.” Ennco Display Sys., 2000 TTAB LEXIS 235, at *19. Based on consideration of all of the evidence of record, and having considered the relevant factors, we find that Applicant has failed to satisfy its burden of proving acquired distinctiveness under Section 2(f) of the Trademark Act. We find that the applied-for mark is a nondistinctive product configuration that has not acquired distinctiveness.

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TTABlogger comment: Product configuration marks nearly always trip over one (or both) of the two hurdles to registration: Section 2(e)(5) functionality and/or Section 2(f) acquired distinctiveness.

Text Copyright John L. Welch 2025.