Can you Trademark a Functional Product Configuration? Part I

In re Change Wind Corp
Change Wind Corp.'s CWC 36kW Wind Turbine
In a precedential Board opinion (here), the USPTO has refused registration of a wind turbine product configuration application by Change Wind Corporation. Change Wind promotes “revolutionary” new wind turbine design that purportedly generates up to 400% more power than competitive designs at a fraction of the cost.  As part of their Intellectual Property strategy, Change Wind sought protection for the design as a product configuration trademark, asserting that the mark consisted of a “three-dimensional configuration of a wind powered turbine for generating electricity featuring four vertically extending turbine wings that are obliquely curved in a twisting manner and spaced from and relative to a vertically extending cylindrical base that tapers at its upper end into [sic] truncated cone with the turbine wings extending from a [sic] elevation beneath that of the truncation of the truncated cone to an elevation above the truncation of the truncated cone, …”
There are many issues in trying to protect a product design in this manner, and this case illustrates many of those issues.  In this first post, we look to the requirement that a product configuration mark must have acquired distinctiveness.  It is well settled that a product design is not inherently distinctive.  If the design is non-functional (which of course was at issue here and something that will be discussed in a follow-up post), it can be registered only upon a showing of acquired distinctiveness under Section 2(f) of the Lanham Act.  This is not a trivial exercise, as the Applicant has the burden to prove acquired distinctiveness and thus must come forward with evidence.
The evidence used in this case was alleged exclusive use for five years, “look for” advertising, trade shows and the like.  The Board found this evidence insufficient due to numerous holes in the evidence.  For example, with regard to the “look for” advertising, the Board noted that while the Applicant’s website advertised that “you can distinguish Change Wind’s VAWT from its competitors by the unique configuration of wings over a conical tower,” there was no evidence of “how widely this “look for” advertising was disseminated, how many consumers may have been exposed to it, or its effectiveness in indoctrinating consumers to view the design as an indicator of source.”  The Board went on to fault numerous other evidence cited by the Applicant as being insufficient or not specific to the particular configuration to establish that it was a source indicator.
As this case makes clear, establishing a product configuration mark requires a clear strategy from the beginning and then five years of diligent effort and record keeping, with all efforts focusing on establishing the produce configuration as a source identifier.

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