Prehistoric Monster Outlives Trademark Examiner's Failure to Function Refusal: TTAB

Practical Law Legal Update 5-603-6806 (Approx. 4 pages)

Prehistoric Monster Outlives Trademark Examiner's Failure to Function Refusal: TTAB

by Practical Law Intellectual Property & Technology

Background

Frankish Enterprises Ltd. (Applicant) sought registration for its monster truck design for entertainment services on the Principal Register. The application described the mark as, “…[a] truck cab body in the design of a fanciful, prehistoric animal."

The Examining Attorney, relying on two internet image searches for "monster truck," refused registration, reasoning that the design would not be perceived as a source indicator for the services because monster trucks normally appear in a wide variety of designs. However, none of the search results included any monster trucks with unambiguous dinosaur or fanciful, prehistoric animal designs, and the record did not show the grounds on which the Examining Attorney concluded that the mark is not inherently distinctive.

Outcome

The TTAB reversed the Examining Attorney's refusal to register the Applicant's three-dimensional design mark. In so holding, the TTAB reasoned that:

The Examining Attorney never explicitly addressed why he found the Applicant's mark did not function as a service mark, but the prosecution history shows he refused registration based on lack of inherent distinctiveness.
Contrary to the Examining Attorney's findings, the mark is inherently distinctive as trade dress that identifies the source of the Applicant's motor sport entertainment services.

Trade Dress as a Service Mark

The TTAB noted that, while trade dress for product design can only acquire distinctiveness through use, product packaging trade dress and trade dress for services can be inherently distinctive (citing Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) and Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992)). After clarifying that the Applicant's design was trade dress for its services and capable of inherent distinctiveness, the TTAB turned to whether the trade dress was in fact inherently distinctive.

Reversal of Refusal to Register Based on Failure to Function as a Mark

The TTAB applied the following four-part test to determine whether the Applicant's trade dress was inherently distinctive:

Whether it was a "common" basic shape or design.
Whether it was [not] unique or unusual in the particular field.
Whether it was 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.
Whether it was capable of creating a commercial impression distinct from the accompanying words.

(See Seabrook Foods, Inc. v. Bar-Well Foods Ltd, 568 F.2d 1342 (CCPA 1977) (formulating the four-part Seabrook test).)

Applying the Seabrook test, the TTAB ruled that the first three parts weighed in the Applicant's favor because:

The "fanciful, prehistoric animal" design was unique among the more than 100 monster trucks in the Examining Attorney's image search results.
To the extent that the Applicant's design shared any common characteristics with other trucks, its unique design incorporated horns, scales, a cut and mold to convey a dinosaur body, a protective shield and eyes bordered by scales, and other distinguishing features.

For the fourth part, the Applicant's design mark was fully capable of creating a commercial impression distinct from the Applicant's registered word mark, JURASSIC ATTACK, which is affixed to the design. The TTAB reasoned that the Applicant's design mark dominates the word mark and is not mere background material because:

The word mark only appears on a small part of the back of the truck.
Viewing the truck from the front reveals the prehistoric animal design, but not the word mark.
The horns from the front and top of the truck design are as large or larger than the words, JURASSIC ATTACK.

Based on this analysis, the TTAB concluded that the Examining Attorney failed both to:

Make a record of any monster truck design that includes anything like the distinctive features of the Applicant's mark.
Show a "reasonable predicate" for his findings that the Applicant's design mark:
- is not inherently distinctive under the Seabrook test; or
- will not be readily perceived as indicating the source of the Applicant’s services.

The TTAB therefore reversed the Examining Attorney's refusal to register the Applicant's design mark on grounds of failure to function as a trademark.

Reversal of Refusal to Register Based on Mutilation

The TTAB also rejected the examiner's argument that, because the Applicant included the wording, JURASSIC ATTACK and certain other markings in the specimens it submitted to the USPTO, the specimens impermissibly depicted a different mark than that which appeared in the Applicant's drawing. In so ruling, the TTAB reasoned that:

The specimens depict a composite mark containing two or more separable elements.
The Applicant had the discretion to include less than the entire composite mark in its drawing.
The variations between the specimens and the drawing were only minor alterations.
The dinosaur truck design was in itself inherently distinctive and therefore registrable.

Practical Implications

This decision underscores that an applicant need not show acquired distinctiveness or secondary meaning to register shape, design or configuration trade dress used to identify its services because these types of trade dress can be inherently distinctive when functioning as a service mark rather than as a product mark. The TTAB's opinion also sounds a cautionary note that Applicants must ensure that their specimens of use do not stray far from the drawings they submit to the Trademark Office lest their application be refused on grounds of material alteration or mutilation.

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