Did you know that in addition to trademarks on names, words, and logos, U.S. law allows you to trademark product designs? Trademarks identify and distinguish the source of goods – often through brand names, like “Coca-Cola” and “Coke,” or symbols, like the cursive red and white Coca-Cola logo. Those trademarks protect the Coca-Cola Company from counterfeiters. But the company also has registered trademarks on its distinctive glass bottle. Product configuration trademarks potentially allow protection not only of brand names but also packaging and product design itself.
There are several key considerations when applying for a product configuration trademark. (These considerations are also important to any unfair competition claim brought against another similar product configuration.)
First, to be considered for registration, products configuration marks must have “acquired distinctiveness.” The Supreme Court decided in 2000 that product designs cannot be, as a matter of law, “inherently distinctive.” In somewhat circular fashion, to be grant a product design trademark, the manufacturer must demonstrate that consumers perceive the design to be a trademark – that is, something that identifies and distinguishes the source of the good. The evidence required to establish acquired distinctiveness depends on the mark and its use. At the minimum, for a mark to have acquired distinctiveness, it must have at least 5 continuous years of substantially exclusive use.
Second, the design mark cannot be functional. In order for trademark protections to apply, the product design must provide no real utilitarian advantage to the consumer, and must be one of many equally feasible, efficient, and competitive designs. The reasoning behind this is that patents already protect those sorts of utilitarian features (if they can be protected). For trademark law to protect those features, even after the patents expired (or never were possible), would be harmful to competition. (Even advertising a clear design feature—knobby glass bottles–as having a functional benefit– i.e., a non-slip grip – can compromise a trademark application or claim of protection.)
Recently, the Trademark Trial and Appeals Board (TTAB) of the USPTO affirmed a denial of a product configuration trademark to National Presto Industries (Presto), a manufacturer of electric skillets. Presto skillets have a swooping, curved leg/handle design.
The evidence the company introduced included the date when the company began selling products with the leg/handle design (more than 10 years prior), sales figures (more than $65M), advertising expenditures (more than $5M), and sample advertising (showing with design). In denying Presto’s trademark application, the Board noted that the sales and advertising figures were not insubstantial, but noted that a high volume of sales did not require a finding of acquired distinctiveness.
What the Board was looking for was a “nexus that would tie together the use of the design and the public’s perception of the design.” While not explicitly requiring it, the Board explained that evidence of “look-for” promotional efforts would be particularly helpful in determining whether the public uses the design as a mark.
These legal requirements of acquired distinctiveness and non-functionality are crucial. The USPTO could require evidence linking the product’s design to public perception. Product configuration trademarks, while they may be helpful in discouraging competitors from marketing similar looking products, are, thus, a tricky area of law.