The Board granted a petition for cancellation of a registration for the product configuration mark shown below (shaped like “a bullet cartridge”) for “automobile antennas,” finding that the mark lacked acquired distinctiveness. The Board rejected petitioner’s claim that the design is aesthetically functional because petitioner failed to prove a competitive need for use of that shape. JVMAX, Inc. v. ESR Performance Corp., Cancellation No. 92063873 (June 29, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Aesthetic Functionality: Petitioner claimed that the registered design is functional under Section 2(e)(5) because “[c]onsumers purchase bullet shaped antennas based on the ornamental appearance of the antennas.” Therefore, the shape is “essential to the purpose of the product which is purchase[d] in large part for the way it looks.”

The Board observed that a mark is aesthetically functional if their is a “competitive need” for the feature. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120, 1122 (Fed. Cir. 1994) (the color black for boat engines is functional because it has color compatibility with a wide variety of boat colors and it makes the engines appear smaller); In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1787 (TTAB 2013) (competitors need to use black packaging for flower arrangements in order to convey an appropriate message or sentiment, and the exclusive appropriation of the color black to single entity would severely limit the availability of appropriate color choices).

Petitioner failed to establish a competitive need for use of a bullet-shaped antenna. The parties and others sell equivalent antenna with many diverse designs. Petitioner alone sells 20 to 30 different types of antenna.

Petitioner has not proven that the bullet-shaped antenna design serves an aesthetic purpose independent of any source-identifying function. Because a product design is aesthetically pleasing and commercially successful does not mean that it is aesthetically functional. See Florists’ Transworld Delivery Inc., 106 USPQ2d at 1789. “[F]unctionality hinges on whether registration of a particular feature hinders competition and not on whether the feature contributes to the product’s commercial success.” M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086, 1097 (TTAB 2001).

Therefore the Board concluded that the bullet-shaped antenna is not aesthetically functional.

Acquired Distinctiveness: Of course, a product shape can never be inherently distinctive and may be registered as a trademark only upon a showing of acquired distinctiveness. The burden of proof to show acquired distinctiveness is heavier for product designs than for word marks.

The party seeking cancellation bears the initial burden to “establish a prima facie case of no acquired distinctiveness.” It must overcome the record evidence of acquired distinctiveness, including everything submitted by respondent during prosecution. The burden of production shifts to registrant only if the petitioner established a prima facie case. The ultimate burden of persuasion rests on petitioner.

The Board first determined that petitioner had established a prima facie case of no acquired distinctiveness. The Board described in detail the evidence submitted in respondent’s application for registration, which included sales figures (44,780 antenna sold for total revenue of $508,900 from 2010-2014), advertising expenditures (totaling $203,000), the distribution of tens of thousands of catalogs, and 104 identical customer declarations purportedly attesting to their recognition that bullet shaped antennas come from a single source. Petitioner provided testimony from two third-parties who sold bullet-shaped antennas, one beginning in 2007.

The Board concluded that petitioner had established its prima facie case. It found that at the time of filing its application to register, respondent’s use of the design was not substantially exclusive. Moreover, respondent provided no testimony or evidence that would allow its sales and revenue figures to be evaluated in context. Sales figures may show that the product is commercially popular, but they are not necessarily indicative of acquired distinctiveness. The advertising figure of $203,000 was questionable, since it represents an unlikely 40% of respondent’s revenues, and the assertion was undermined by respondent’s testimony that it does not keep records of advertising expenditures per product.

In addition, respondent’s advertising did not show the design alone, but only with other marks, and the bullet-shaped antenna was just one of may products displayed in respondent’s catalogs. There was no “look for” advertising and nothing that highlighted or emphasized this shape. Finally, the customer declarations suffered from many deficiencies, leading the Board to question whether the statements accurately reflect the declarants’ personal recollections and experience, or whether they merely “signed what was put before them.”

The Board then looked at the rest of the record evidence. It found that respondent’s nine years of use is “significant but not necessarily conclusive or persuasive considering the mark is a product configuration.” Respondent never used the “tm” or “R” symbols in connection with its antennas, and prior to the filing of its application it took no action to notify competitors that it considered the shape to be a trademark. The only action it took after the registration issued was to send cease-and-desist letters.

There was no evidence of unsolicited media coverage identifying the design uniquely and exclusively with respondent and no evidence that any alleged copiers of the design did so to trade on respondent’s goodwill, as opposed to adopting a desirable design.

The Board concluded that the record, viewed in its entirety, “is insufficient to prove that the primary significance of the bullet cartridge shaped automobile antenna identifies the source of the automobile antenna.”

[The Board declined to consider petitioner’s fraud claim in view of its ruling of no acquired distinctiveness].

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TTABlog comment: Shouldn’t the Board’s conclusion have been that petitioner carried its burden to prove that there was no acquired distinctiveness? See page 11: “The Board must … decide whether the party seeking cancellation has satisfied its ultimate burden of persuasion, based on all the evidence made of record ….” Instead, the Board said respondent failed to prove acquired distinctiveness.