“Bond. James Bond?”

MANUFACTURERS TURN TO TRADEMARK LAW,NOT SECRET AGENTS, TO PROTECT PRODUCTS AND ASSETS

By Michael Patrick

Manufacturers are often familiar with the benefits of patent protection, e.g., design patents, and
trademark protection, e.g., for product or brand names. They are, however, less familiar with “trade dress” protection, the protection of the “total image” of a product or its packaging. Unlike patent protection, which is limited in duration, trade dress protection is
perpetual — it could last
forever.

What is “trade dress?”

“Trade dress” protects the “total image of a product,” including, “size, shape, color or color combinations, texture, graphics, or even particular sales techniques.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1. Trade dress protection has been extended to the shape of soda bottles, a Rubik’s cube puzzle, and, recently, the packaging associated with the popular Red Bull drink.

“Trade dress” falls under U.S. trademark law. Like a trademark, e.g., a name, trade dress can exist for so long as it is used to identify the source of the particular product to consumers. In contrast, a “design” patent lasts only 14 years. Consequently, even after a design patent has expired, trade dress can protect the product configuration.

In order to be protected, trade dress must be non-functional and distinctive. It can either be inherently distinctive or have acquired secondary meaning. Trade dress acquires secondary meaning when, in the minds of the public, it is associated with a single source or producer.

Walther’s PPK

From 2008 to 2010, a battle over whether “trade dress” protection should be extended to firearms was taking place at the U.S. Patent & Trademark Office. Carl Walther GmbH sought to register the design configuration, i.e., the trade dress, of the PPK as a trademark.

The Walther PPK is perhaps best known as James Bond’s pistol. It has appeared alongside 007 in numerous films, including, From Russia with Love,
Goldfinger,
Thunderball,
You Only Live Twice,
Golden Eye,
Tomorrow Never Dies, and
Quantum of Solace.

While other firearms manufacturers had previously obtained federal registrations for their product configurations, the U.S. Patent & Trademark Office examiner initially rejected Walther’s application. In the examiner’s view, the proposed mark was “a commonly used configuration of pistols” and that “other pistols contain the same placement of the elements that make up applicant’s mark.” The examiner went so far as to say that the PPK was “nearly identical to many pistol designs in the marketplace.” The examiner did not find Walther’s arguments and evidence persuasive, finding that there was “nothing in the applicant’s advertising materials that inform the consumer of how to identify the applicant’s goods and distinguish them from similar goods in the marketplace.” In rejecting a survey conducted by Walther, the examiner said, “many of the respondents . . . believed the silhouette or outline of the [Walther] PPK is recognizable as a trademark,” but that the survey did “not show that consumers recognized the configuration of the pistol as a mark that identifies the applicant as the source of goods.” The examiner also criticized the survey claiming that it only “survey[ed] consumers with extensive knowledge of handguns” and not the “public.”

Rightly, Walther appealed the examiner’s refusal to the Trademark Trial Appeal Board (TTAB) which overturned the examiner’s rejection. Among the highlights of the TTAB’s opinion, it rejected the examiner’s conclusion that the PPK shared similar elements with other pistols. The TTAB explained, “even if certain features found in [Walther’s] PPK handgun design are common to other pistol designs, this does not necessarily establish that handgun consumers are unable to perceive the overall appearance” of the PPK as “distinctive.” On this point, Walther provided both direct evidence, e.g., testimony, declarations and its survey, and circumstantial evidence, e.g., sales figures and marketing expenditures, establishing that the PPK had “acquired distinctiveness”. For example, 54% of the survey participants were able to identify the manufacturer of the PPK based on its shape and 33% were able to identify either the applicant or its licensee.

The TTAB also cited Walther’s expert, S.P. Fjestad (noted author of the Blue Book of Gun Values) as stating, “While there have never been more configurations of semi-automatic handguns available, there are certain handgun configurations that are more recognizable and stand out as trademarks from the crowded [field] of handguns in the market. One of the most recognizable handgun configurations among handgun consumers is the Walther PPK.”

The TTAB also noted Walther’s advertising and marketing expenditures, highlighting that from 2004 to 2007, Walther spent approximately $920,000 for advertisements in trade publications, websites and magazines that focused on firearms. A vast majority of those advertisements exhibited a “full pictorial representation” of the PPK and touted its design features (e.g., the PPK’s “sleek, elegant lines have excited shooters from the moment it was created over 75 years ago.”)

Finally, the TTAB’s view was bolstered by extensive acts of intentional copying of the PPK by third-parties and through licenses.

Trade Dress Protection Is Critical

Manufacturers generally understand the necessity of intellectual property protection and enforcement. However, all too often manufacturers either ignore or do not know about trade dress protection. An owner’s intellectual property portfolio should be protected by a blend of patent, trademark and trade dress rights. For example, it may be possible to acquire a design patent and, after the design patent has expired, to protect the elements of the product through trade dress law.

Michael Patrick has extensive experience counseling and protecting manufacturers’ intellectual property and, in particular, the rights of manufacturers in the firearms industry. Prior to joining Grimes LLC, Michael was Counsel to the Renzulli Law Firm in New York where he routinely and successfully represented several of the world’s most well-known firearm manufacturers in connection with complex intellectual property, corporate and litigation matters.

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