Rocker switch design refused registration as a trademark. IN RE CARLING

A trademark is traditionally thought of as a word, phrase or symbol that a manufacturer places on their products. However, just about anything that signals to consumers the identity of the company that produced a product can be granted trademark protection. The key to a trademark is, the association consumers make between a trademark and the products produced by the trademark owner. Trademark law in the United States grants the first user of a trademark the right to exclude others from branding products using a trademark in a way that causes consumer confusion. If a company uses a trademark, which was first used by another company, to brand goods in a way that causes consumer confusion, that can be considered trademark infringement. A trademark owner can file a lawsuit to stop trademark infringement with an injunction and to get monetary damages for trademark infringement which has occurred.

The majority of trademarks are 2 dimensional, either text or a drawing. Three dimensional objects can also be registered as trademark. Trade dress constitutes a “symbol” or “device” within the meaning of §2 of the Trademark Act, 15 U.S.C. §1052. Trade dress originally included only the packaging or “dressing” of a product, but in recent years has been expanded to encompass the design of a product. It is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Thus, trade dress includes the shape of a product shape.

Registering trade dress is slightly more complicated that a normal trademark application. When an applicant applies to register a product design or other trade dress, two substantive issues are considered: (1) functionality; and (2) distinctiveness. If the design of a product is essential to the use or purpose of the product or if it affects the cost or quality of the article it is functional and cannot be registered. With respect to distinctiveness, produce design can never be considered inherently distinctive, therefore evidence of acquired distinctiveness must be submitted.

The standard that a trademark applicant must meet to register a three dimensional object can be confusing therefore it is education to review case law.

IN RE CARLING TECHNOLOGIES, INC., Serial No. 88279409 (TTAB 2021) is an example of a 3 dimensional object that was not granted trademark protection because insufficient evidence of acquired distinctiveness was submitted.

Applicant in this case filed an application to register the configuration of its rocker switch product as a trademark. A “rocker switch” is an electrical switch that you press on one side to turn a device on and the other to turn it off. The configuration applicant wanted to register is reproduced above.

To demonstrate acquired distinctiveness applicant submitted a design patent it had for configuration of the rocker switch, catalogs, advertisements, employee statements, reseller statements and examples of competitor’s products that copied the applicant’s product.

The Trademark Examining Attorney refused registration of Applicant’s claimed trademark on the grounds that the claimed trademark was non-distinctive product designs that did not function as a trademark and that Applicant’s showings of acquired distinctiveness under Section 2(f) of the Trademark Act was insufficient. Applicant appealed the rejection to the Trademark Trial and Appeal Board (TTAB).

The TTAB noted that product designs can never be inherently distinctive and will always require evidence of acquired distinctiveness or secondary meaning to be registered as trademarks. The fact that other producers were selling rocker switches which resembled applicants heightened the requirement for showing acquired distinctiveness. The TTAB found that the employee and reseller statements were not persuasive evidence of acquired distinctiveness because the statements were from parties interested in the outcome of the application. The catalogs and advertising also were not persuasive evidence of acquired distinctiveness because other rocker switch designs made by the applicant were featured.

In a product design application, the critical inquiry is whether the product design is being used and advertised in the marketplace in such a manner that consumers associate the product design with a particular applicant, and therefore view the product as emanating from a single source. The TTAB concluded that applicant failed to demonstrate that its design had acquired distinctiveness and affirmed the trademark examiner’s refusal.

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