TTAB reverses refusal of application for monster truck trade dress

In In re Frankish Enterprises Ltd (Serial No 85494703, February 27 2015), the Trademark Trial and Appeal Board (TTAB) has issued a precedential ruling that helps clarify US trademark law with respect to the registrability of trade dress used in connection with services. Explaining that a trade dress used in connection with the offering of services – as opposed to trade dress used in connection with a product – can be inherently distinctive, the TTAB concluded that the unique trade dress of a monster truck was registrable for “entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions”.   

Applicant Frankish Enterprises sought registration of the following design for use in connection with the above-referenced services:

In support of its application, the applicant submitted specimens consisting of photographs showing its “monster truck” in action, and a poster depicting a prominent image of the truck in connection with an advertisement for an upcoming performance. In refusing registration of the mark, the trademark examining attorney took the position that the mark did not function as a trademark because, as just “one of many interesting monster truck designs in which… monster trucks appear”, the mark consisted of trade dress that was not inherently distinctive. As such, the proposed mark did not “identify and distinguish the applicant’s services from those many other monster truck designs” and did not “indicate the source of the applicant’s services”.

The TTAB began its analysis by noting that, although “trade dress in the nature of product design can never be inherently distinctive, product packaging trade dress and trade dress for services can be”. The TTAB then explained that in this case – contrary to the position taken by the trademark examining attorney – the applicant was not seeking to register its design for a product; rather the application sought to protect the applicant’s “'fanciful, prehistoric animal' design for its monster truck exhibition services”. Such services, the TTAB pointed out, could be performed with or without the animal design on the outside of the truck. The TTAB thus concluded that the trade dress of the truck was actually the packaging in connection with which the applicant offered its services. 

Having determined that the applicant’s design was capable of being inherently distinctive, the TTAB turned to whether, in fact, it was. The four-part test for assessing inherent distinctiveness looks at whether the shape/design is:

1. a common one;
2. unique in the relevant field;
3. a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods; or
4. capable of creating a commercial impression distinct from any accompanying words. 

The TTAB noted that the elements of this test “are merely different ways to ask whether the design, shape or combination of elements is so unique, unusual or unexpected in [the relevant] market that one can assume without proof that it will automatically be perceived by customers as an indicator or source”. 

In terms of the applicant’s monster truck design, the TTAB concluded that the applicant’s design “stands alone in the quality and quantity of its distinctive traits which set it apart from the other monster trucks” of record. Further, although one of the specimens submitted by the applicant in support of its application and, indeed, the truck itself, included the words “Jurassic Attack” in addition to the design elements forming the claimed mark, the design was “fully capable of creating a commercial impression distinct from the words...” because the three-dimensional design was not mere background; it created a commercial impression that stood on its own, distinct from the words.

The TTAB also disagreed with the trademark examining attorney’s argument that, based on the specimens submitted, the mark did not function as a mark for the services identified in the application. Rather, the TTAB found that the mark would be “‘readily perceived as identifying’ the applicant’s monster truck services”. The TTAB pointed out that one of the specimens – an advertising poster for a motor sports show – so prominently featured the applicant’s applied-for design that it would be clear to consumers viewing the poster that the “design depicted was not just any monster truck, but the applicant’s distinctive monster truck”. In terms of the photos showing the applicant’s truck in action, the TTAB noted that “a mark applied to a product can ‘function not only as ornamentation for the [product] but also as a mark for the applicant’s services’”. It also explained that “the Lanham Act takes a very flexible approach to the question of what constitutes a service mark”. In this case the photos showed the applicant’s mark in use in connection with the “rendering (ie, 'sale’) of its services”, and thus were acceptable in that they “may be perceived as identifying those services”.

In addition to refusing registration of the mark because it did not function as a trademark, the trademark examining attorney also took the position that the mark was not registrable because it was not supported by an appropriate specimen. Specifically, the trademark examining attorney argued that because the specimens featured the words “Jurassic Attack” and other design elements, but the drawing of the mark did not, the drawing did not display the mark in substantially the same manner as displayed in the specimens. The TTAB easily dispensed with this argument, agreeing with the applicant that the mark as it appeared in the specimens was the predominant element shown, creating a commercial impression separate and apart from the words and minor design elements missing from the drawing. The TTAB explained that, although the specimens featured elements in addition to the design depicted in the drawing, those other elements were not so predominant as to outweigh the monster truck design which the TTAB had already concluded was so unique and distinctive. Indeed, the TTAB pointed out, the specimens so prominently featured the truck design because it was so distinctive. As such, the design could and did stand on its own.

It is important to keep in mind that here the applicant sought registration of the truck design mark for services, not for products. Whether the TTAB would reach the same conclusion, on the same evidentiary record, if registration were sought for t-shirts featuring the design or for toy trucks in the shape of the design, is doubtful.  The decision suggests that an application listing the goods as toy trucks would alter the analysis from one relating to product packaging to one focusing on product design, thus (in addition to opening the door to a challenge based on the ornamental nature of the design) preventing the applicant from relying on the inherent distinctiveness of the design and instead requiring a showing that the design had acquired distinctiveness as a result of the applicant’s use, advertising and promotion of the mark.

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