Philips' electric toothbrush base assembly design held to lack acquired distinctiveness

United States of America
For registration purposes, what kinds and amount of evidence will successfully support a claim of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act, 15 USC § 1052(f), in a three-dimensional (3D) configuration trade dress mark for a toothbrush head for electric toothbrushes? This issue was explored in In re Koninklijke Philips Electronics NV (Serial No 85092079, September 26 2014), a recent precedential decision of the Trademark Trial and Appeal Board (TTAB) with regard to the claimed trade dress below:

Claimed mark                                        Drawing

Registration was finally refused pursuant to Sections 1, 2, and 45 of the Trademark Act, 15 USC §§ 1051-1052, 1127. The examiner held that the applied-for mark, which consists of a 3D configuration of the goods, failed to function as a mark because it consists of a non-distinctive product design that is not registrable on the Principal Register without proof of acquired distinctiveness under Section 2(f). Another way of expressing this is by stating that a product design that provides no real utilitarian advantages to the user, but is one of many equally feasible, efficient and competitive designs, such as the product design at issue in this case, may be registrable with a persuasive showing of acquired distinctiveness pursuant to Section 2(f). The kinds and amount of evidence necessary to establish acquired distinctiveness in relation to goods depends on the nature of the mark and the circumstances surrounding the use of the mark in each case.

Both the examining attorney and the TTAB noted that:

"An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product. Courts have provided further guidance, stating that in determining acquired distinctiveness, relevant factors may include 'copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, consumer studies (linking the name to a source)'. No single factor, however, is determinative."

In cases of product design, the evidence provided to establish acquired distinctiveness must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general. To establish secondary meaning, a manufacturer or applicant must show that the primary significance of a product feature or term, in the minds of the public, is to identify the source of the product rather than the product itself. If growth in sales volume could be attributed to the product's popularity, sales success may not be sufficient evidence to prove that the mark has acquired distinctiveness.

The sole issue on appeal as framed by the TTAB was whether the applicant had made a prima facie showing of acquired distinctiveness sufficient to overcome the refusal. Did the evidence of record show that the consumers perceive the product design base assembly as primarily identifying the applicant as the source of the goods?

The applicant's evidence included the following:

  1. A verified statement that the mark has become distinctive of the applicant’s goods by reason of substantially exclusive and continuous use in commerce for at least five years [a longer period of time, namely, over 10 years] prior to the claim of distinctiveness.

  2. A claim of ownership of Registration No 2733754 [cancelled for failure to file a Section 8 declaration of continuing use] owned by Philips Oral Healthcare Inc, a “member” of the applicant’s “group” of companies.

  3. A statement that, between 2002 and 2011, over 72 million units of the applicant’s goods were sold in the United States, and sales data, volume and US dollar figures for the years 2006 to 2012 for “individual units of the brushhead” “sold separately from the power toothbrush itself” showing millions of units sold and hundreds of millions of dollars of annual sales.

  4. Two samples of product packaging of the applicant’s competitors packaging stating that the products are “designed to fit” the applicant’s products. Allegedly, this indicates that customers of the applicant’s goods generally perceive the configuration of the stated goods as an indication of source of genuine goods, the essence of a trademark. Customers “look for” the particular configuration of the stated goods (ie, the mark set forth in this application).

  5. A submission characterised as a display clipped from Amazon purportedly showing that “competitors use a photograph of their own goods prominently featuring the applicant’s mark [the base assembly product].

The applicant contended on appeal that its prior (cancelled) registration, coupled with its long period of continuous use, high volume and dollar amount of sales and evidence of infringing use by competitors constituted a prima facie showing of acquired distinctiveness under Section 2(f).

Missing from the applicant’s evidence of record were the annual advertising expenditures related to the mark and annual advertising samples showing that the mark was actually promoted to the public as an indication of source. The TTAB found that highly persuasive 'look for’ advertising evidence, which refers to advertising that directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from the applicant, was not of record. 'Look for’ evidence does not refer to advertising that simply includes a picture of the product or touts a feature in a non-source-identifying manner. 

The TTAB held that the cancelled prior registration could not be used as evidence of acquired distinctiveness.  Further, where proposed marks that are not inherently distinctive because they consist of product designs are concerned, evidence of five years’ use considered alone is generally not sufficient to show acquired distinctiveness. The applicant has sold its goods for over 10 years, and it provided several years of US sales data regarding volume and dollar figures of its base assembly product. The TTAB acknowledged that these figures were not insubstantial. Nonetheless, “mere figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source”. Third-party packaging and the Amazon clipping also did nothing to show that the public recognised the claimed trade dress mark as an indication of source for the applicant’s goods. In affirming the final refusal, the TTAB found that the applicant’s submitted Section 2(f) evidentiary was simply insufficient to support its claim of acquired distinctiveness.  

Brian Edward Banner, The Banner Firm LLC, Washington DC

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