TTAB decision highlights importance of 'look for' advertising

In In re ic! berlin brillen GmbH (Case 85 USPQ 2d 2021, February 14 2008), the Trademark Trial and Appeal Board (TTAB) has provided guidance for applicants attempting to register a non-inherently distinctive trademark.

ic! berlin brillen GmbH (IBB) sought registration on the principal register of a design mark for "an earpiece for frames for sunglasses and spectacles" (Class 9 of the Nice Classification) consisting of a straight upper line and an angled lower line separated by openings. During prosecution, IBB amended its application to seek registration pursuant to Section 2(f) of the Lanham Act. In support of its application, IBB submitted declaration testimony attesting to five years of continuous and exclusive use of its mark. It also provided evidence of sales of approximately 40,000 units of eyewear featuring the mark over a five-year period, and $115,000 in marketing expenses during 2006 alone. Further, IBB provided the following evidence:

• magazine and internet advertising;
  
  
• celebrity placements;
  
  
• trade show displays; and
  
  
• 10 letters from customers/retailers of IBB's product attesting to their familiarity with the mark and to the source-identifying nature of IBB's design among retail purchasers of IBB's eyewear.

Notwithstanding this evidence, the examining attorney refused registration under Sections 1, 2 and 45 of the act on the grounds that the design was not inherently distinctive and that IBB had failed to establish acquired distinctiveness. On appeal, the only issue before the TTAB was whether IBB had successfully established acquired distinctiveness in its design.

The TTAB began its analysis by noting that the burden of proving a prima facie case of acquired distinctiveness in an ex parte application proceeding rests with the party applying for trademark protection. While a declaration attesting to five years of continuous and substantially exclusive use may serve as prima facie evidence of acquired distinctiveness under the trademark legislation, the TTAB noted that "the language of the statute is permissive and the weight accorded to this kind of evidence depends on the facts and circumstances on the particular case".

Moving on to the facts of record in support of IBB's showing of acquired distinctiveness, the TTAB explained that although the record did reflect sales, advertising and promotion of the product bearing the mark, such evidence was "not especially impressive" and was insufficient to establish that the ultimate purchasers of IBB's sunglasses and spectacle frames had come to associate the mark with one source. The TTAB pointed out that while the evidence submitted was a good starting point, the TTAB was unable to really gauge the impact of the sales numbers and advertising spend because IBB had not provided evidence indicating the relative size of its numbers in relation to those of its competitors. Trying to put IBB's numbers into perspective, the TTAB concluded that:

"it is safe to say that millions of persons in the United States wear eyeglasses and/or sunglasses. Thus, the applicant's eyewear sales of 40,000 units from 2001 to October 2006 would constitute a small portion of the total sales of eyewear for this period."

In any event, the TTAB pointed out that "it is well settled that even compelling sales and advertising figures do not always amount to a finding of acquired distinctiveness". The TTAB was also not persuaded by the declarations from IBB's retailer customers, although it did afford them some weight. According to the TTAB, the problem was that the declaration did "not establish an association of [the mark] with the applicant other than [by] an extremely small number of the purchasing public".

Accordingly, the TTAB agreed with the examining attorney that because the evidence submitted by IBB did not sufficiently focus on the promotion of the design as a trademark, such evidence was insufficient to establish that IBB's mark had come to be viewed by the relevant purchasing public as a trademark through IBB's efforts. Although the TTAB stopped short of specifically requiring 'look for' advertising (ie, advertising that directs the consumer to look for a particular graphic element on packaging or a particular design feature of a product), the conclusion reached by the TTAB (as well as the examining attorney) strongly suggests that this type of advertising will go a long way to support an allegation of acquired distinctiveness and will be one of the type of evidence that the US Patent and Trademark Office will look for in such cases.

However, applicants for US trademarks must keep in mind that the ultimate question is not simply what has been done, but how effective those efforts have been in educating consumers to the source-indicating nature of the alleged trademark.

Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York