A View to a Trademark

Gun manufacturer turns to 007 for help

Over the years, fictional superspy James Bond has extracted himself from a number of tough spots. In the case of In re Carl Walther

GmbH, a gun manufacturer turned to 007 for help overcoming a rejected trademark application.

A golden gun?

Walther filed an application for a trademark on the product configuration design of firearms, pistols and air soft guns (the "PPK handgun design"). The trade- mark examiner rejected the registration on the grounds that the design wasn't inherently distinctive — and the examiner wasn't persuaded by Walther's argument that the PPK handgun design had acquired distinctiveness. Walther appealed to the Trademark Trial and Appeal Board (TTAB).

The PPK handgun was used as a prop in nearly all of the James Bond films for about 40 years.

The TTAB explained that an applicant for a trademark registration shoulders a heavy burden when attempt- ing to establish the distinctiveness of a product design. The applicant must show that consumers perceive the product configuration as identifying the source of the product and not just as the product itself.

Quantum of evidence

In support of its position, Walther submitted a variety of direct and circumstantial evidence — including a consumer recognition survey and declarations from individuals attesting to the "distinctiveness and noto- riety" of the PPK design. Walther also contended that the handgun had a "definite aura" and "mystique" surro result "Jam thro sive appearance in pop culture."

Die another day

The TTAB reversed the trademark examiner's refusal to register, finding Walther's evidence persuasive. In the consumer survey, for example, more than half of the participants associated the PPK handgun design with a single source and about one-third could correctly identify the source. The board cautioned, however, that the survey results alone weren't conclusive evidence in establishing acquired distinctiveness but should be considered along with other evidence in the record. In this case, the other evidence included expert tes- timony. An expert witness on handguns and the mar- ketplace for handguns testified that 1) consumers do consider a handgun's design when deciding whether to buy it, and 2) the Walther PPK is one of the most recognizable handgun configurations by handgun consumers. Turning to circumstantial evidence, the TTAB noted that the evidence showed Walther's "substantial efforts" to promote the PPK handgun since its intro- duction in the United States in 1968. The company advertises the gun extensively in trade publications, on websites and in various magazines featuring fire- arms. For the period 2004–2007 alone, Walther spent about $920,000 for such ads. The ads often feature full pictorial representations and tout "sleek, elegant lines [that] have excited shooters from the moment [the PPK handgun] was created over 75 years ago."

Weapon of choice

The TTAB also acknowledged the extensive unso- licited media exposure received as a result of the PPK handgun being used as a prop in nearly all of the James Bond films for about 40 years, being referred to as "James Bond's weapon of choice." The board resisted concluding that the PPK handgun has become distinctive among consumers of handguns simply because the design has been recognized by filmgoers, but acknowledged that recognition by filmgoers indicated a certain level of notoriety or fame. Interestingly, the TTAB found that the popularity of the PPK design was further reflected in the fact that it's imitated, under license, in replica products. The board reasoned that "a party would only attempt to replicate another party's trade dress or product configuration, under license or not, if that trade dress or product con- figuration is perceived by the consumers as distinctive."

Avoiding Dr. No

Product configurations don't immediately qualify for trademark protection. So In re Carl Walther GmbH offers some valuable insight on how to increase the odds of successfully obtaining trademark protection for a product configuration.

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