Establishing Secondary Meaning in Product Design Trade Dress

Brand owners often face significant challenges in obtaining federal trade dress registration. A recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the owner of the Timberland boot brand, is no exception to this struggle.

Unlike wordmarks, product design is I never have Consumers perceive that such designs are intended to make the goods more useful or attractive, rather than to identify their origin, and thus inherently unique as a matter of law. There must be Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 US 205, 212-213 (2000). To obtain federal trademark registration for product design, an applicant must establish a secondary meaning. In addition to the usual requirements of indicating secondary meaning associated with the word mark (i.e., proof of long-term use, advertising and sales spending, advertising examples, consumer affidavits and declarations, and customer surveys), “Find” ads are important. Steps to establish secondary meaning required for federal trade dress registration. As far as the product design case is concerned, “Find me” advertising can be the most effective evidence an applicant can provide. Other forms of evidence are less important.

for example, TBL Licensing, LLC vs. VidalNo 1:21-cv-00681, 2022 WL 17573906 (ED Va. Dec. 8, 2022), TBL Licensing, LLC (“Timberland”) considers the sale and advertising of boots with the claimed features of critical importance. and the trademark must be attached with rights.

The court found the numbers to be “impressive,” but similar numbers establishing secondary meaning in word marks were not in product design. , the market success of a product more accurately reflects the desirability of the product configuration rather than the source-specified capacity of its features. The court conceded that his Timberland efforts to use large amounts of advertising dollars as evidence of secondary meaning ran into the same problem. Ultimately, despite the huge amount of money and his more than 50 years of advertising, Timberland did not provide any evidence that he was involved in “hunting” advertising. Without ‘find it’ ads, Timberland could justify its massive sales and ad numbers by saying ‘one thing it needs to prove: consumers can’t choose what they want, even though there are tons of similar-looking boots out there. Timberland’s products can only be identified by the eight product features identified and could not be associated. Notwithstanding any other mark used on or with the Product. ” The court explained:

“Advertising evidence [Plaintiff] The offer in this case is notable for the absence of “Find me” ads. Despite decades of intense promotional activity, [Plaintiff] has used many different themes to promote its products, but consumers should look for eyelets, lug soles, collars, etc., which it claims constitutes now protectable trade dress as a source identifier. never advertised. Alone all the elements together. ”

Ineffective look-for ads

According to the court TBL, customers generally do not consider the design to indicate the unique source of the goods. Instead, applicants must teach their customers to “look for” design features that are intended as source identifiers. And applicants must do so in a manner that does not emphasize function over identification of sources. The court noted that whenever Timberland’s advertisement referred to claimed features, it was discussing the functional benefits of those features, such as waterproofness and durability. This type of advertising cannot legally establish distinctiveness, as functional design does not act as a trademark. “Find me” ads also fail when the ads force consumers to look for traditional trademarks such as words and logos.

of TBLthe advertisements submitted showed various advertisements and in-store displays depicting the registered TIMBERLAND wordmark and Timberland’s registered tree logo prominently to identify the merchandise as belonging to Timberland. Consumers will see traditional marks “long before” they are close enough to determine whether a product contains the claimed product design.

Effective look-for advertising

Advertisement “Find a unique earpiece design”, which depicts the headpiece of the submitted design, was judged to be effective as a “search” advertisement. HM Electronics, Inc., 2015 WL 12722655 (TTAB 17 November 2005). In addition to evidence of large-scale sales and advertising expenditures, the applicant also uses print advertising, bill-stuffing, electronically-delivered advertising, and entice consumers to “seek unique earbud designs.” Engaged in “find it” advertisements on pages of the Applicant’s website.

In addition to its “Find” advertisement, applicant submitted photographs of products from other manufacturers that differed from the claimed design. The Trademark Trial and Appeal Board (TTAB) states that “look for” advertising is particularly effective when applicants establish that it is common for manufacturers in the industry to design headsets with unique looks. pointed out that

Brand owners can enhance the effectiveness of their ‘search for’ ads by incorporating fun and catchy elements that capture the public’s attention into submitted designs. Owens-Corning Fiberglas Corp. mentions the use of the color pink, using clever catchphrases such as “make your house pink” and “think pink”, and the “Pink Panther” cartoon. The way even the characters encourage the arbitrary use of pink for the not-so-subtle fiberglass insulation. About Owens-Corning Fiberglas Corp.., 774 F.2d 1116, 227 USPQ 417, 423-24 (Fed. Cir. 1985).

make a plan

Applicants may consider embedding Find My ads in traditional media such as social media, websites, or print. These advertisements should focus on drawing public attention to the product design that the applicant is trying to protect, rather than other sources of information identifying features, wordmarks, or other indications. Where applicable, “Find me” ads are particularly effective where industries traditionally create their own designs. “Find me” advertising is a powerful tool and is often the only practical way to establish secondary meaning if the applicant can get started with this marketing strategy quickly.