United States: Previous #10: TTAB affirms refusal to register handbag shape: generic and (alternatively) lacking acquired distinctiveness
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The Commission has renamed this opinion as a precedent. In a 51-page opinion, the board confirmed the refusal to register the product configuration below, for “handbags”, finding that the design is generic and, in the alternative, devoid of acquired distinctiveness “Handbags embodying the proposed mark are so common in the industry that such a product design is not able to indicate the source and … Applicant’s proposed mark is at best a minor variation of it.” Applicant’s subsidiary claim under Section 2(f) failed in part because of the same lack of exclusivity of use. In re Jasmin Larian, LLC2022 USPQ2d 290 (TTAB 2022) [precedential] (Opinion of Judge Martha B. Allard).
The Board noted that the issues in dispute, genericness and acquired distinctiveness, are interrelated in that a third party’s use of the same or similar design affects each decision.
Genericity: Generic product designs cannot be saved. To see, for example., Stuart Spector Designs, Ltd. vs. fender musical instruments, 94 USPQ2d 1549, 1555 (TTAB 2009) (guitar form). “[C]Authorities exercise particular caution when extending protection to product designs, as such claims present an acute risk of stifling competition.” A design may be so prevalent in industry that ‘it cannot identify a particular source, in which case registration must be refused “on the ground that the proposed mark does not function as a mark.” [Genericness may be thought of as a form of
“failure-to-function” – ed.]. It was undisputed that the genre at issue was “handbags” and that the relevant consumers were the general public – that is, ordinary consumers who purchased handbags. The question was therefore the primary meaning of the proposed mark.
The plaintiff has sold his “Ark” bag since January 2013, with sales increasing sharply in 2017. The evidence included third party bags sold before 2013, comments on handbag designs, fashion articles, Plaintiff’s own acknowledgment that its design is a copy of a common design, internet postings and third party handbags sold after Plaintiff’s Ark bag was launched, but before it became popular. “The record shows that third parties offered identical or nearly identical handbags for sale in the United States prior to Plaintiff’s first use date.”
Reviewing the USPTO’s submissions in detail, the Board concluded that the evidence of third-party use was “substantial”. The Board rejected various objections made by the applicant to the evidence, including hearsay and reliance on non-US sources. It found particularly probative the fact that “even the plaintiff acknowledged that the bag embodying the proposed mark is a reproduction of a common model of bamboo handbag”.
From this record, we conclude that handbags embodying the proposed mark are so common in the industry that such product design is not capable of indicating the source and that the mark proposed by the applicant is at best a minor variation of it. Our conclusion that the proposed mark is generic is an absolute bar to its registration on the main or supplemental register.
Distinction earned: For the sake of completeness, the Commission has also considered the applicant’s claim that the product design in question has acquired distinctive character. “Distinctiveness requires ‘substantially exclusive and continuous use of the mark in trade’. The burden of proving acquired distinctiveness is greater for a product configuration.
The Council applied the Converse factors to determine it. The claimant provided no evidence of surveying or evidence of “searching” for advertising. Its sales figures lacked market share information. The plaintiff claimed to have policed the “mark” but his evidence was indefinite and not conclusive. In view of the evidence of third-party use, the Board concluded that the applicant “has failed to demonstrate the ‘substantially exclusive’ use of the proposed mark required by law”. Evidence of favorable and unsolicited media attention was not sufficient to defeat the other evidence on record.
Conclusion: The Commission upheld the refusal of registration on both grounds.
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Comment from TTABlogger: It is rare for a product configuration to pass the TTAB test. I blogged some thoughts on this a few years ago [here]although I have not included a discussion of “genericism”.
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