How To Succeed In Registering A Product Configuration Trademark In The U.S. – Trademark

Specimen
of Hex-Shaped Dice Box

The U.S. Patent and Trademark Office (USPTO) generally refuses
to register the configuration of a product as a trademark when that
the configuration either is functional or does not identify a
single source. The Trademark Trial and Appeal Board (TTAB) usually
affirms that refusal.

In the unusual case discussed below, the USPTO approved a
configuration trademark. That application was opposed upon
publication, but the TTAB dismissed the opposition. This case is
instructive as to how to succeed in registering a product
configuration trademark under appropriate circumstances.

The Issues

Three Frog, LLC (d/b/a Englewood Academy) is one of the three
biggest sellers of wooden boxes specially adapted for storing dice
(called “dice boxes”) or board game components. It
applied to register as a trademark the configuration of the inside
of its hexagonal-shaped dice box. This 2018 application claimed use
since 2014.

Drawing
of the Hex-Shaped Dice Box Trademark

Chris W. Taylor Jr., a designer of dice boxes, opposed the
application on the grounds that the configuration was functional,
and had not acquired distinctiveness to identify the Applicant as
the source of the product.

The TTAB Analysis

Functionality

A trademark may be functional either from a utilitarian or
aesthetic viewpoint. The Trademark Act under Sec. 2(e)(5) prohibits
registration of “a mark which . . . comprises any matter that,
as a whole, is functional.”

The Utilitarian Functionality Analysis. Even if
a product is useful, it may not be regarded as functional for
trademark purposes. The U.S. Supreme Court in TrafFix Devices, Inc. v. Mktg. Displays,
Inc., 532 U.S. 23, 24 (2001), said that a design
suffers from utilitarian functionality only if the design “is
essential to the use or purpose of the article or if it affects the
cost or quality of the article.”

The non-exclusive factors considered for a finding of
utilitarian functionality are:

• A utility patent has disclosed the utilitarian advantages of
  the design.




• Advertising materials have touted the design’s utilitarian
  advantages.




• Functionally equivalent designs are not available.




• The design results in a comparatively simple or cheap method of
  manufacture.

In this opposition, the record did not contain any relevant
utility patent, advertising materials, or evidence of a
manufacturing advantage, and there were dozens of alternative dice
box configurations available.

Prior to the trademark application filing, the U.S. Copyright
Office had refused a claim for copyright protection of the design
as being a “useful article” (defined for copyright
purposes as having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey
information). As such, the Copyright Office determined that the
design did not have the requisite copyrightable authorship. The
design also consisted of separable features having common and
familiar shapes, which did not have the requisite creativity. The
TTAB did not feel bound to follow this Copyright Office finding
because it was not a final decision, and it was not equivalent to a
finding of trademark functionality as defined by the U.S. Supreme
Court.

The Aesthetic Functionality
Analysis. The U.S. Supreme Court in Qualitex Co. v. Jacobson Prods. Co.,
514 U.S. 159, 170 (1995), held that a design suffers from being
aesthetically functional if “the recognition of trademark
rights would significantly hinder competition.”

In this opposition, absent from the record was any evidence on
how dice boxes were developed or marketed, what features purchasers
sought, or why Applicant’s configuration presented a superior
design. Also, alternative dice box designs were available in the
marketplace.

Accordingly, the TTAB dismissed the functionality claim on both
grounds.

Distinctiveness

The U.S. Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros.,
Inc., 529 U.S. 205 (2000), acknowledged that a product
design is not inherently distinctive. Therefore, even if a design
is non-functional, acquired distinctiveness (called “secondary
meaning”) must be established in order to register the product
design as a trademark.

The factors considered for a finding of secondary meaning
are:

• Evidence that actual purchasers associate the mark with a
  particular source (typically measured by consumer surveys).




• The duration, degree, and exclusivity of the design’s
  use.




• The amount spent to advertise the product, and the nature of
  the advertising for it.




• The amount received in sales for the product, and number of
  customers for it.




• Intentional copying of the product’s design by others.




• Unsolicited media coverage of the product embodying the alleged
  mark.

In this opposition, the TTAB found “somewhat
persuasive” five declarations of third parties in the tabletop
gaming business. Although each declaration followed the same
formula in averring recognition of the Applicant’s
configuration, they varied in length and detail, with each
declarant plainly stating a lack of awareness of the same or a
similar design. In fact, the three leading dice box companies in
the industry each had unique and recognizable designs.

The evidence showed that since 2015, Applicant’s business
had exponential sales growth for its product, possessed exclusivity
(except for a few hobbyists), had promotional expenses exceeding
$1,000,000, and the record showed widespread advertising and
distribution in various media, with promotions at conventions
reaching 2 million visitors. Applicant also had sent
cease-and-desist letters to copycats, and no recipient continued to
manufacture copies after receiving such a letter. Further, dice box
“users” were generally very involved gamers who are
likely to recognize that different-shaped dice boxes originate from
different companies. Finally, Applicant’s dice box
configuration drew unsolicited media coverage in a variety of
industry publications and websites.

Accordingly, the TTAB found the weight of the evidence clearly
supported that the Applicant’s dice box configuration had
acquired secondary meaning. Thus, Opposer’s claim of
non-distinctiveness failed.

Chris W. Taylor Jr. v. Three Frog,
LLC, Opposition No. 91255161
(T.T.A.B. March 29, 2024).

Author’s Note:

To succeed in registering a product configuration as a
trademark, regardless of who has the burden of proof, you should be
prepared to show as many of the following factors as possible
(among other factors, if available):

Non-Functionality

1. The design elements are not essential to the use or purpose of
   the product.




2. The product’s design does not make it comparatively simple
   or cheap to manufacture.




3. The product’s design is not significantly superior to
   alternative competitive designs.




4. You have not sought or obtained a utility patent disclosing the
   utilitarian advantages of the product’s design.




5. You have not advertised the utilitarian advantages of the
   product’s design.




6. There are functionally equivalent alternative product designs
   available.

Distinctiveness

1. Survey evidence shows purchasers associate the design with a
   particular source.




2. You have used this design exclusively for a considerable time
   and to a significant degree.




3. You have taken steps to stop infringements.




4. The amount and manner of your advertising have been
   substantial.




5. The amount and manner of your sales, and the number of
   customers, have been substantial.




6. There has been intentional copying of your product design by
   others.




7. There has been unsolicited media coverage of your product
   design.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.