In theory, anything that identifies the source of a product or service can be a trademark. This includes not just words and logos, but colors, sounds, and packaging (which falls under the related category of trade dress.) What about a product design trademark? Philips recently tested the boundaries of this issue with a US Patent and Trademark Office (USPTO) application to register the base assembly of an electric toothbrush as a trademark.
Philips’ description of the product in its USPTO application was as follows (deep breath):
Color is not claimed as a feature of the mark. The mark consists of a base assembly of an electric toothbrush. The base assembly includes a base or lower portion, approximately 1 ½ inches high, with the lower edge thereof being circular, approximately 7/8 inches in diameter. On the base portion, ovals appear in the middle thereof, going around the entire base portion. The diameter of the base portion remains the same from the lower edge to a point approximately 5/8 inch from the lower edge and then curves inwardly gradually and smoothly to an upper edge. Extending from the upper edge of the base portion is an intermediate portion. The intermediate portion has two parts. The first part has a lower edge which mates with the upper edge of the base portion and has an upper edge which is angled approximately 10° from the longitudinal axis of the base portion. The exterior of the first part continues the slight inward curve of the base portion. The second part mates with the upper edge of the first part and has an upper edge which mates with the lower edge of an extending stem portion. The exterior surface of the second part has a greater curvation than the first part, such that the boundary between the first and second parts is discernable. Extending from the upper edge of the intermediate portion is the stem portion which is circular in cross-section and is elongated. At the upper end of the stem portion is a bristle plate portion with toothbrush bristles. The stem portion extends at an angle of approximately 10° relative to the longitudinal axis of the base portion. The matter shown in broken lines, specifically the bristle plate portion, toothbrush bristles and stem portion are not part of the mark and serve only to show the position of the mark.
My teeth feel cleaner already.
All jokes aside (for the moment), you’ll notice this doesn’t have much to do with cleaning teeth. That’s because, as my regular readers know, functional features are not eligible for trademark protection. Product designs – as long as they’re not functional, but rather merely decorative – can be protected as trademarks, but first the owner has to show that those designs have “acquired distinctiveness.” This means, essentially, that the public recognizes this design as emanating from one source and being associated with a particular product (or products.) Think of the shape of a Coke bottle:
Anyone can recognize that shape without having to see the Coca-Cola logo. That’s what we’re looking for – you see this design and think, “Coke!” The shape of a Coke bottle is protectable as a trademark because it has acquired distinctiveness. And yes, before you ask, the shape of a Coke bottle is a registered trademark.
Back to Philips’ electric toothbrush. The USPTO Examining Attorney rejected the application on the grounds that the design had not acquired distinctiveness. Philips brought the action before the Trademark Trial and Appeal Board (TTAB.)
So how does one show acquired distinctiveness? The TTAB opinion states that “relevant factors may include ‘copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, consumer studies (linking the name to a source).'” (Quoting a previous case.)
The opinion highlights the point that no single factor is determinative. This is important; it means that you can’t simply point to a sales number or this many years of exclusive use and automatically clear the bar. There is, unfortunately, no simple rule along the lines of “If you have $10 million in sales, your design has acquired distinctiveness.”
The TTAB Opinion upheld the Examining Attorney’s refusal to register the design as a trademark. Evidence by Philips that they had exclusively used this particular design for more than 10 years, sold over 72 million units in the US between 2002-2011, and had sales of about $100 million per year between 2006-2012 (boy, am I in the wrong business) all were not enough to sway the TTAB. The opinion states, “We acknowledge that these figures are not insubstantial.” Do I detect a hint of humor from our friends at the TTAB?
It’s interesting that Philips failed to submit advertising expenditure information or examples of ads, thereby preventing the TTAB from determining “the nexus, if any, between the sales success and advertising efforts and [Philips’] product design.”
Was the TTAB just being picky and pedantic in this opinion? Not necessarily – they did provide a bit of guidance for future applicants who find themselves in Philips’ place:
In a product design application, the critical inquiry is whether the product design is being used and advertised in the marketplace in such a manner that consumers associate the product design with a particular applicant, and therefore view the product as emanating from a single source…Sample advertisements showing “look-for” types of promotional efforts from an applicant may be particularly probative on the issue of whether a product design functions as a source identifier. “‘Look for’ advertising refers to advertising that directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from that source. It does not refer to advertising that simply includes a picture of the product or touts a feature in a non source-identifying manner.”
The takeaway here is that if you have a product design that you’d like to protect as a trademark, you’re going to want to establish a record of “look for” advertising. You can’t just rely on the success of the product itself. You need to draw the attention of consumers – and the USPTO – to the non-functional design features. But remember: if you suggest that these features have any sort of function beyond decoration, you’ve lost any right to trademark protection, forever.
It’s crucial for sales, advertising, marketing, and legal to all be on the same page for a product design trademark to be protected. Follow this advice and brush twice a day and you’ll be covered.
