Carl Walther GmbH, the maker of the Walther PPK, the gun featured in multiple James Bond movies, sought to register the gun’s product configuration as a United States trademark. The Trademark Examining Attorney refused registration concluding that the gun’s configuration was not inherently distinctive and that Carl Walther had failed to show acquired distinctiveness. Applicant appealed and the Trademark Trial and Appeal Board (“Board”) reversed. The Board concluded that the product configuration claimed in the application was, in fact, distinctive, as a result of the efforts by Carl Walther GmbH (“Walther” or “Applicant”) to link the product’s design to its source.
The Walther application showed a line drawing of the gun and included a highly technical description, to wit:
The mark consists of the three-dimensional configuration of a pistol. The mark includes the overall size and shape of the pistol and the external accents and features of the pistol. The mark includes the relative proportions of the external accents and features of the pistol. The mark includes the lines and ridges along both sides of the slide, barrel, and frame indicating grooves and ridges on the surface of the pistol; the vertical and angular lines on the rear of the slide indicating ridges on the surface of the pistol; the pattern on the hand grip; the shape and location of the magazine release lever; the shape and appearance of the trigger guard; the exterior shapes and designs on the hand grip or other portions of the pistol and the placement or position of those shapes; the shape and proportion of the barrel, and the shape, proportion, and position of the accessory rail.
After receiving an initial refusal to register the mark, Applicant made a claim under 15 U.S.C. § 1052(f), Lanham Act § 2(f), relying on its nearly 40 years of use to establish that the mark had become distinctive of its guns. In further support of its claim of acquired distinctiveness Walther submitted evidence of “extended use and repeated appearance [of the gun design] in popular culture” -- for example, its use in movies -- together with evidence of unsolicited media attention, and decades of product sales, advertising and promotion. Walther also submitted declarations attesting to the “distinctiveness and notoriety” of the gun’s design, and a consumer recognition survey wherein 54% of respondents were able to identify the maker of the Walther PPK based on its shape (i.e., the mark sought to be registered).
The Examining Attorney took issue with the Applicant’s mark because he concluded that it was nothing more than a “commonly used configuration of pistols”. He criticized Walther’s circumstantial evidence because, in the Examiner’s opinion, it failed to include “look for” advertising of the type specifically designed to call consumers’ attention to the design sought to be registered. The Examiner also attempted to undermine the survey by arguing that it failed to focus on the appropriate universe (which, in the Examiner’s opinion, was not broad enough).
On appeal, the Board reversed the Examiner’s refusal to register and ordered that the mark be passed to publication. As an initial matter, the Board recognized that the burden of proving acquired distinctiveness (or secondary meaning) fell on the shoulders of the Applicant. Nonetheless, the Board explained that there is no clear standard as to the amount of evidence necessary to establish that a mark is registrable under Lanham Act § 2(f). Indeed, as recognized by the Federal Circuit, “the exact kind and amount of evidence necessarily depends on the facts of the case”, and the Applicant faces a “heavy burden” when the mark sought to be registered is a product configuration mark. Ultimately, the question is whether the Applicant has established that “the product configuration is perceived by consumers as not just the product, but, rather, that the design identifies the producer or source of the product.”
Addressing the evidence submitted by Walther, the Board concluded that it was sufficient, at a minimum, to make out a prima facie case of acquired distinctiveness, which the Examiner had failed to rebut. As to the survey, the Board found it to be probative on the issue and that the percentages (more than half associating the gun with a single source, and one-third able to correctly identify that source) to be “not out of line with previous cases where secondary meaning or acquired distinctiveness has been established.” The Board was not persuaded by the Examiner’s argument that the survey examined the wrong universe merely because it focused on consumers with some knowledge of handguns. Rather the Board agreed that Applicant’s chosen universe of subscribers to handgun publications was appropriate because the Applicant “need only show that the mark has become distinctive in the minds of consumers or prospective consumers of handguns [i.e., the goods claimed in the application], not the ‘public’ at large.”
Applicant’s “circumstantial” evidence was also persuasive. Evidence, by way of a declaration attesting to more than $920,000 in advertising for the three year period between 2004 and 2007, together with a declaration from a recognized handgun authority, evidence reflecting four decades of sales, and evidence of use in numerous James Bond movies as “James Bond’s weapon of choice”, all supported Walther’s claim that the product configuration had become distinctive. Similar support was found in the Applicant’s licensing efforts. As part of that program, Walther had licensed a line of replica products including air pistols. The Board explained: “[t]he fact that the PPK handgun design is sought after and licensed to a maker of replica products has been recognized as one type of evidence that helps establish that a configuration or trade dress has become distinctive.”
Finally, the Board addressed the Examiner’s evidence of third party handguns that appeared to be similar in general overall configuration to the Walther gun. In dismissing this evidence, the Board explained that while such evidence was no doubt relevant, there was insufficient basis upon which the Board could conclude that the appropriate consumer had been exposed to such designs and, if so, to what degree. Moreover, the mere fact that some of these third party designs may have had elements similar to those of the Walther PPK did not mean that consumers were unable to perceive Applicant’s gun design as distinctive.
While the In re Carl Walther decision has been designated “Not Precedent of the TTAB”, and while the Board clearly recognizes that each case is different and that there is no bright line rule when it comes to the question of assessing acquired distinctiveness, the decision nonetheless provides useful guidance on the types of evidence that will be persuasive in protecting product configuration trademarks.
∗ A version of this article appeared in World Trademark Review Daily (November 11, 2010).