A recent opinion by the Trademark Trial and Appeal Board addressed what is probably the most important legal issue of our time: can the design of a monster truck be protected as trade dress?
First, a quick review of terms:
The Trademark Trial and Appeal Board is part of the United States Patent and Trademark Office. Among other things, the TTAB is the place you go to appeal a decision by a USPTO Examining Attorney – for example, if your trademark application was rejected.
Trade Dress is, more or less, a form of trademark protection that applies to the look and feel of a business or product. The distinctive shape of a Coca-Cola bottle is one well-known example of protected trade dress.
The case before the TTAB, In re Frankish Enterprises Ltd., addressed whether or not the design of a monster truck named Jurassic Attack, pictured above, could be registered.
Frankish (known in the TTAB file as the “Applicant”) applied to register the design of Jurassic Attack for the following services: “Entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions.”
The Examining Attorney rejected the application on the grounds that the design could not function as a source indicator for the services because of the variety of monster truck designs out there. Meaning, the public would not uniquely identify the Jurassic Attack design with those types of entertainment services.
OK, here’s my favorite part of the TTAB Opinion:
…Applicant’s service is exhibiting its monster truck in action, such as doing wheelies, jumping over and crushing smaller vehicles and otherwise entertaining fans with the truck’s size, power and sheer awesomeness, which could be performed with or without the “fanciful, prehistoric animal” design on the outside of the truck…
Thus, the TTAB determined that the design could be “inherently distinctive” for services. Meaning, this type of design, at the moment it’s introduced to the public, might be so distinct from the designs of its competitors that it can acquire trade dress rights.
(A bit of a complicated side note here – under current law, trade dress for products can’t be “inherently distinctive” – the products have to earn their distinctiveness over time through use by the public. But designs for services can be “inherently distinctive” – so the applicant doesn’t have to prove that the consumers recognize it as such via surveys and similar types of evidence.)
OK, so how does the TTAB decide if a design for services is inherently distinctive? If you know anything about the law, you’re thinking “I bet there’s a multi-part test.” And you’d be right. The test is:
1] whether it was a ‘common’ basic shape or design, [2] whether it was [not] unique or unusual in the particular field, [3] whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or [4] whether it was capable of creating a commercial impression distinct from the accompanying words.
I feel like I’m losing the crowd here, so I’m going to skip the orderly march through all four parts of the test and jump to the good stuff:
…the totality of the record makes clear that Applicant’s truck stands alone in the quality and quantity of its distinctive traits which set it apart from the other monster trucks about which the Examining Attorney submitted evidence, as the body of Applicant’s truck is cut and molded to convey the body of a dinosaur and adorned with other dinosaur elements, including horns, a protective shield and eyes bordered by scales. These elements are unique and make Applicant’s truck unlike any of those included in the Examining Attorney’s search results…Applicant’s three-dimensional “fanciful, prehistoric animal” design mark has not been shown to be lacking distinctiveness; to the contrary, on this record it passes the…test for inherent distinctiveness. It also creates a separate commercial impression from the words JURASSIC ATTACK, and would be readily perceived as identifying Applicant’s monster truck services.
So the TTAB overturned the Examining Attorney’s ruling, and you can all rest easier tonight, because the design of this particular monster truck can, in fact, be registered with the USPTO as protectable trade dress.
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