The TTAB affirmed a refusal to register the product configuration shown below, for "yoga mats," the purported mark being described as "a three-dimensional configuration of a rectangular-shaped yoga mat having one corner being curved and the remaining three corners being right angles." The Board agreed with Examining Attorney Samantha Sherman that Lululemon's proof of acquired distinctiveness was insufficient. In re Lululemon Athletica Canada Inc., Serial No. 86718537 (June 22, 2017) [not precedential] (Opinion by Judge Bergsman).
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As we all know (See WalMart v. Samara), a product configuration cannot be an inherently distinctive trademark. The applicant for registration must establish acquired distinctiveness under Section 2(f). The Board observed that [t]here is no fixed rule for the amount of proof necessary to demonstrate acquired distinctiveness; however, the burden is heavier for product configurations." Proving acquired distinctiveness for a product design is no easy task. "[E]even long periods of substantially exclusive use may not be sufficient to demonstrate acquired distinctiveness especially where the subject matter sought to be registered is a product design."
Lululemon claimed use of the mark for more than five years; promotion of the mat on its website and in social media; sales of more than 1.3 million mats; 14,000 hits on a website video; widespread media attention; significant promotional expenditures; and a high product rating. However, nothing submitted by Lululemon referred to the shape of the mat. Lululemon did not provide any "look for" advertising directing consumers to the shape of the product.
"Look for" advertising refers to advertising that directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from that source. Stuart Spector Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d at 1572.
The Board found Lululemon's proofs to be inadequate, concluding that one curved corner "is not a distinguishable feature of the yoga mat." Others sell yoga mats with rounded corners. [E.g., see photo below].
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Without any advertising directing consumers that Applicant’s yoga mat has one curved corner, consumers are unlikely to notice that feature of Applicant’s yoga mat, let alone perceive it as being exclusively associated with a single source.
The substantial sales figures alone do not establish consumer recognition of the product shape as a trademark; they might evidence that popularity of the product itself. Lululemon's reference to its advertising expenditures was vague, and it did not show how many different individuals viewed the website video or visited its website.
This record does not support a finding that consumers perceive the design of Applicant’s yoga mat as an indicator of source. There is simply nothing in the record that promotes the design of Applicant’s yoga mat in a way that would imbue it with source-identifying significance. For example, Applicant’s website and the product reviews show the product like any other advertising or photographs for purposes of product comparison.
And so the Board concluded that Lululemon had failed to prove acquired distinctiveness.
TTABlog comment: The Board is always looking for "look-for" advertising in these product configuration cases. Seldom found, however.