Philips sought to register the base assembly design of its electric toothbrushes (shown below) as a trademark:

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Product designs are not considered inherently distinctive, but may be registrable upon a showing of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act. 

For a product design, the evidence provided to establish acquired distinctiveness must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general. 

In support of its claim of acquired distinctiveness, the Applicant introduced the following evidence: 

  • a statement that the mark has been used for more than ten years; 
  • a claim of ownership of a cancelled registration for a mark the Applicant claims is “substantially the same”; 
  • evidence that between 2002-2011, over 72 million units of the Applicant’s goods were sold in the United States; and
  • samples of product packaging from the Applicant’s competitors for products that are “designed to fit” the Applicant’s products. 

The Examining Attorney refused registration on the basis that the Applicant did not establish the design has acquired distinctiveness. The TTAB agreed and affirmed the refusal to register the product design for at least the following reasons.  

First, the Board did not allow reliance upon the expired registration.  

Second, the Board acknowledged that the evidence of the Applicant’s sales was “not insubstantial,” but found that a high volume of sales does not always amount to a finding of acquired distinctiveness, especially for product design.  What was missing was evidence of a connection between those sales and the Applicant’s advertising that promotes the product design.  Merely including a picture of the product in advertising may not be sufficient to establish that consumers recognize the design feature as a trademark. 

Third, the Applicant’s evidence that competitors show the product design on packaging to sell replacement toothbrushes was not persuasive.  The Board found that the evidence did not show an intent to copy the Applicant’s base assembly design; rather, it only showed that the competitor’s replacement toothbrushes will serve as a substitute for the Applicant’s base assembly product. 

In re Koninklijke Philips Electronics N.V., Serial No. 85092079 (T.T.A.B. September 26, 2014) [precedential].