As the Board explained, the key issue in failure-to-function cases is whether the proposed marks would be perceived as source indicators for the applied for goods. Here, the evidence the Examining Attorney Christina Calloway put forth that the proposed marks were merely model designations was seemingly overwhelming, including several screen shots from the Applicant’s website that specifically called out the proposed character marks as “item model number[s]” and “manufacturer part number[s].” One example is below:
Applicant attempted to overcome the rejections by producing images of the motors at tradeshows, and of the product packaging in which the numbers were called out, but even some of those photographs identified the marks as a “part number”; the Applicant helpfully provided the red circle annotations:
The Board made quick work of the Applicant’s arguments that consumers viewed the character marks as something beyond model numbers, finding the “record is simply devoid of any evidence that anyone other than Applicant considers the proposed marks to be source-identifiers rather than indicators of product compatibility in automotive production and repair.” (Ed. note – The Applicant sometimes used the TM symbol after the model numbers, but that usage is just further evidence of the Applicant’s belief, not how consumers view the character marks.)
On appeal, the Applicant attempted to argue that because it had used the model numbers continuously since 2008, the marks had acquired distinctiveness pursuant to Section 2(f). But the Board made quick work of this argument on appeal because, even after the Examining Attorney twice suggested to the Applicant that it submit evidence to support a Section 2(f) claim during prosecution, the Applicant neither amended its applications nor sought to submit supporting evidence. Accordingly, as the Applicant first raised the argument on appeal, the Board found it untimely and gave it “no consideration.”
With that, the Board affirmed the three refusals to register.
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Text Copyright John L. Strand and John L. Welch 2020.