Wrong skillset for trademark registration (Best of 2016)
Originally posted on April 28, 2016.
John Welch reports, at the TTABlog, about what you’d think would be a no-brainer:
The Board affirmed a refusal to register the configuration shown below, for “electric skillets,” finding that Preston’s proof of acquired distinctiveness under Section 2(f) was inadequate. In re National Presto Industries, Inc., Serial No. 85883551 (April 19, 2016) [not precedential].
The mark comprises the curved handles of the skillet, not the metal base or the glass lid or the knob (which are shown all in dashed lines).
Of course, under Wal-Mart, product configurations cannot be inherently distinctive, so Presto resorted to Section 2(f), relying on its use of the “mark” since 2005, sales of more than $65 million, more that $5 million in advertising expenditures, and distribution of some 80,000 product catalogs.
The Board observed that sales figures showing commercial success of the product are not probative of purchaser recognition of the product’s configuration as a source indicator. The critical question is whether the product design is being used and advertised in such a way that consumers “associate the product design with a particular applicant, and therefore view the product as emanating from a single source.” So-called “look-for” advertising may be particularly probative.
This is not a surprising outcome, even a little tiny bit.
But maybe I take too much for granted! So let’s get basic.
Readers of this blog may fall into one of several groups. Among these groups may be “clients” and “outside counsel.”
If you are “clients,” please do not let “outside counsel” convince you to pay fees for the prosecution, much less the appeal, of attempts to register the shape (we call it “configuration”) of your cooking appliance as a trademark unless it is a very, very, very unusually-shaped cooking appliance.
Here is some free non-legal, friendly advice from LIKELIHOOD OF CONFUSION®: Your company’s fine, handsomely-designed cooking appliance is almost certainly not nearly as unusually-shaped — which is to say, distinctive, from a trademark law point of view — as you might think.
In fact — read this slowly — the more handsome it is (and by the way, that Preston skillet is a very, very dandy-looking piece of cookware! It is!) the less likely it is, probably, to have acquired distinctiveness.
Trademark-wise, I mean.
Which is all we talk about here, and also in the Trademark Office of the PTO (isn’t that what they’re supposed be talk about?), after all.
And if you’re outside counsel? You don’t need me to tell you any of this, of course. But if there were any doubt, now there is In re National Presto Industries, Inc. and its decision about a skillet to add to your skillset.