Trademark attorneys shaken AND stirred over Walther product configuration TM ruling
Who says the Commissioner of Trademarks is “Dr. No”?
To the contrary, some trademark registration applications Only Live Twice — and that’s quite enough. John Welch, The Man with the Golden Blog, reports on a TTAB ruling that wouldn’t let this remarkable trademark registration die:
Rarely does a product configuration mark pass TTAB muster . . . but it just happened in In re Carl Walther GmbH, Serial No. 77096523 (October 26, 2010) [not precedential]. The Board reversed a refusal to register the mark shown below for “firearms; pistols; and air soft guns,” finding that Applicant Walther had established acquired distinctiveness for the product design under Section 2(f). . . .
TTABlog comment: The advertising expenditure figures were not impressive, and specific sales figures (other than for replicas) were not provided. Perhaps Walther has one person to thank for this victory: Bond, James Bond. Or maybe two: add the survey expert.
Well, I’d rather thank Bond. (In fact, I believe I already have!) As John notes, here the Board nodded to the survey, mumbled something not too rigorous-sounding about the result being “in line” with what they might be looking for in that sort of thing, and then scooted along.
Though like 007 John is too discreet among proper company to make like a Walther pistol and deliver his criticisms like a brick through a plate glass window, his post does shoot the Living Daylights out of some of the rationale underlying the decision in In re Carl Walther GmbH. As John broadly hints the famous gun’s just plain fame is probably what accomplished the mission and got the girl here. John’s post is not For Your Eyes Only; I encourage you to read it and tell all your friends. (UPDATE: Start here for a more typical case involving product configurations.) Judicial realists such as LIKELIHOOD OF CONFUSION® could conclude that the tribunal essentially saved the applicant from what may have been something less than a Thunderball of an application, in terms of the quality of proof submitted, but took judicial notice of the fact that, heck, “Well, come on, everybody knows that James Bond uses one of these beauties!”
That sounds like the right result, in an abstract “well, is it a trademark? does it have secondary meaning or what?” way. It seems commonsensical. Trademarks is easy, right?
Yes, real easy. Go through John’s short analysis of this decision and you’ll see why it reinforces that nagging suspicion some of us have that a disturbing amount of trademark law is ultimately grounded in little more than judicial instinct, not to say whimsy, whether at the trial level or on appeal via a sort of de facto sub silentio de novo review. (Triple-decker Latin. Heh.)
It’s bad enough reading Circuit Court opinions in trademark cases where a whole appellate panel is winging it in three-part harmony. But when the observation that a judge may just be making up trademark jurisprudence as she goes along occurs to LIKELIHOOD OF CONFUSION® during litigation, having gone through doing all those interesting things they teach in law school about how to prove or defend legal claims provides not even a Quantum of Solace!
Now don’t get me wrong. “Wet” methods are perfectly appropriate for the Free World’s greatest spy. His is a dirty job, and someone’s got to do it. Of course the end justifies the means! Besides, for those of us concerned with the legal end of things, James Bond’s foes are bizarre Batman-like super villains whose own supra-national status exempts them entirely from “technicalities” that might bog down saving the world.
But for the system of ordered liberty which Commander Bond’s like is empowered (by Her Majesty, of course, which makes the doctrinal difficulties here a tad easier to digest) to protect, it’s hard to be quite as enthusiastic about an area of law where judges sometimes rule as if they have… yes… a Licence to Kill.