No trademark protection for the act of placing a sign inside a toy

In Vermont Teddy Bear Company Inc v Build-A-Bear Workshop LLC, the US Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) has granted Build-A-Bear Workshop LLC's motion for summary judgment against an opposition to the use as a mark of a felt or brass heart inside the chest of a stuffed toy animal.

Build-A-Bear filed an intent-to-use application for the trademark on February 13 1998. Vermont Teddy Bear Company Inc opposed on the grounds of prior use rights in a felt or brass heart inside the chest of a stuffed toy animal. According to Vermont Teddy Bear, it markets and sells this concept through its toy animal kits, which include instructions directing the consumer to place the heart in the toy bear or other animal during assembly, and through retail stores where the assembly of a Vermont Teddy Bear stuffed animal can include the insertion of a felt or brass heart inside the toy.

Build-A-Bear moved for summary judgment on the grounds that Vermont Teddy Bear's use of a heart-shaped object is "ornamental or decorative" and cannot give rise to trademark rights as a matter of law.

The TTAB observed that the trademark for which Vermont Teddy Bear sought protection was, in fact, "a procedure or step in the assembly of its goods, namely, that of placing a heart-shaped object in a stuffed toy animal" and held that this "procedure or step" cannot be construed as a trademark under the Lanham Act, since it fails to meet the definition of a trademark. In particular, the alleged mark "does not consist of any tangible 'word, name, symbol or device, or any combination thereof' but merely of an action to be performed by consumers of [Vermont Teddy Bear's] goods and services". As such, the sign fails to distinguish Vermont Teddy Bear's goods and services. The TTAB noted that the evidence of use that was submitted, (eg, Vermont Teddy Bear's advertising and selling of toy animals and toy animal kits that include a heart-shaped object and instructions for placement of the object in the toy), demonstrated that "when consumers or potential purchasers encountered [Vermont Teddy Bear's] goods or services, the heart-shaped object was not already inserted in the toy animal's chest but could be inserted by the consumer after purchasing the toy animal kit (emphasis added)".

The TTAB also held that the alleged mark was unprotectable under the concept of trade dress and pointed out that even if Vermont Teddy Bear had sought protection for the heart-shaped object itself, rather than the act of inserting the object into a stuffed toy, the object was still incapable of functioning as a trademark since it is placed inside the toy after the product is purchased. Vermont Teddy Bear "is essentially relying on the consumer to prepare or create [Vermont Teddy Bear's] proposed trademark".

Although Vermont Teddy Bear's opposition was dismissed, the TTAB cautioned that its decision does not ensure that Build-A-Bear's application for the same trademark would mature into a registration, reminding the parties that when Build-A-Bear files its specimens of use in support of its intent-to-use application, the USPTO might at that point refuse registration of the sign if the specimens fail to show proper trademark use. Of course, while so noting, the TTAB effectively afforded the junior user, to the detriment of senior user Vermont Teddy Bear, the opportunity to develop and demonstrate "proper" trademark use.

The TTAB's decision also raises the interesting question of whether the "procedure or step" of inserting a heart-shaped object into a stuffed toy can, in fact, function as a trademark. Given that non-traditional elements such as colours, sounds and smells have become accepted as trademarks, it may be only a matter of time before a court finds that a "procedure or step" is capable of protection.

Mary A Moy, Ladas & Parry LLP, New York

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