The TTAB has affirmed its refusal to register the dress configuration mark (see below) of the popular Timberland boot, a wardrobe staple in hip-hop culture (see The World is Yours by Nas), indicating that the pattern has not achieved distinctiveness acquired under Section 2 (f) of the Trademark Law. Regarding TBL Licensing LLC, serial number 86634819 (TTAB April 2, 2021).

While product designs may not be inherently distinctive, a product design that does not provide any real utility benefit to the user, but is one of many equally achievable, efficient, and competitive designs can be saved. upon presentation of acquired distinctiveness in accordance with section 2 (f) of the Trademark Law. Identifier. to 6.

During the examination, among other reasons, the examiner refused registration on the grounds that the applicant’s mark is a “product configuration comprising non-distinctive features under Sections 1, 2 and 45 of the Law on Marks, 15 USC §§ 1051-52, 1127, for which Applicant’s evidence of distinctiveness acquired under Section 2 (f), 15 USC § 1052 (f) is insufficient. The Council confirmed the refusal.

In order to determine whether the boot had acquired distinctive character, the Commission turned to the Converse factors of (1) brand association with a particular source by actual buyers (typically measured by customer surveys); (2) the duration, degree and exclusivity of use; (3) the amount and mode of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the brand.

Factor 1: Brand association with a particular source by actual buyers

Although direct consumer testimony may be relevant in establishing acquired distinctiveness, the Commission attached little probative value to the statements of the Timberland boot retailers because the registrants were not the “average or end customer” of the boots. On the contrary, retailers already knew the source of the boots. The multiple snippets from various publications were also of little value, as the snippets included links to purchase the boots and identified the boots as Timberland boots, rather than asking potential consumers to identify the plaintiff’s business attire as the source. Timberland boots.

Factor 2: Duration, degree and exclusivity of use

Although Timberland has alleged that the exact trade dress / product configuration has been done for over 30 years, the Commission has found that the overall shape and appearance of other third-party work style boots “is quite enough. similar to the commercial boot dress the Applicant seeks to register ”and attributes little value to this factor. The Board also noted that in only one instance Timberland sought to prevent a third party from selling an allegedly counterfeit boot.

Factors 3 and 4: quantity and mode of advertising; Amount of sales and number of customers

Although Timberland showed impressive sales figures and advertising efforts, none of the ads did the following: “Highlight the design features of the product The applicant seeks to record or promote these collective features as a ‘source indicator. Instead, registration advertisements consistently show an image of the applicant’s lace-up boots primarily with the tree logo visible and with the TIMBERLAND word mark and / or tree logo highlighted and / or the “original yellow” color put forward. The Commission therefore attached little weight to these factors.

Factor 5: Intentional copy

There was “no evidence that any copying by a third party of one or more elements of the Applicant’s trade dress was intentional, or even if it was, was due to an intention to confuse the applicant. customers as to the source of the products ”.

Factor 6: Unsolicited media coverage of the product embodying the brand

Finally, while there have been numerous examples of unsolicited media coverage, the coverage did not focus on elements of Timberland’s trade dress.

This case demonstrates that applicants face a heavy burden if they wish to obtain registration for one product configuration and prevent others from using similar configurations. In order to prove that their product configuration has acquired distinctiveness and is susceptible to protection, they must produce evidence clearly demonstrating that the consumer is aware of the source of the product configuration. This evidence will ideally include properly designed surveys of the final consumer base showing that they relate the product configuration to a specific manufacturer. In addition, the applicant must develop an extensive “research” marketing campaign that advertises the configuration of the product. In many cases, the Patent and Trademark Office will want to ensure that the applicant has been selling and advertising the product configuration for at least five years before issuing a registration.

Publisher: Catherine Hollande