Next Step: Registering a Trademark for an Inherently Distinctive (and Wonderful) Legal Blog

Time for a teen years confession.

For about two years, starting on August 25, 1997, my life had about four principal components: sleep, eat, school, GoldenEye. For the uninitiated, GoldenEye was a first-person shooter video game for the Nintendo 64, based on the James Bond film of the same name. And it. Was. AwesomeWidely regarded as one of the most successful, beloved, and influential video games of all time, GoldenEye helped prove that pale, unathletic teenagers and drunken frat boys had more in common than they ever previously dreamed — a shared joy incartoonishly shooting their friends in the face.

Playing GoldenEye was its own reward, and I never expected any remuneration for those long, sleepness nights spent playing the game, devouring Oreos by the handful, and listening to Jay-Z’s Hard Knock Life album on repeat (also all true). But it seems I am, in fact, due a “thank you” card from a little-known company called Carl Walther GmbH Sportwaffen. That company — better known simply as Walther — manufactures the PPK pistol, best known as James Bond’s weapon of choice. And no doubt thanks in part to the efforts of obsessive gamers like myself, last month Walther received a rare product configuration trademark from the Trademark Trial and Appeal Board for the design of its iconic gun.

That’s right: the shape of this gun is now a registered trademark.

Traditionally, trademark protection is accorded to company and product names, logos, and slogans. Kodak — a company name. CyberShot — a product line. “The Best a Man Can Get” — a slogan. The distinctive green-rimmed Starbucks logo. In other words, all of the obvious signifiers of the source of a product or service. So the idea that a product can be its own trademark is definitely unintuitive. Luckily for Walther, though, the company hired lawyers. And as any lawyer will tell you, the law cares very little for your wounded intuition.

Walther availed itself of a comparatively obscure corner of the Lanham Act governing federal trademark protection — Section 2(f), which allows the registration of any “mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” Walther succeeded in registering its PPK design as a trademark by establishing “acquired distinctiveness” — in other words, proving that, over time, the distinctive design of the PPK handgun had become unique in the minds of consumers, and had come to serve a source-identifying function (i.e., like a brand name or logo). Walther made that case by trotting out some impressive survey evidence, which indicated that 54% of respondents associated the PPK handgun design with a single source, and 33% of respondents knew that that source was Walther (numbers, the Hollywood Report, Esq. speculates, that could rival the Q scores of the cast of Glee). And the key to it all, Walther argued (and the TTAB agreed), was the James Bond connection (and MGM, rightsholder in the Bond franchise, didn’t even sue Walther for it — how quaint).

In other words, it was a young Ken Basin and all his movie-and-video-game nerd friendswatching and playing way too much GoldenEye until we could draw the PPK design blindfolded that got Walther where it is today. Not to be immodest or anything. I’d also accept chocolates with my “thank you” card, Walther.

Of course, this trademark registration is not the kind of thing that happens every day, or even every year. Walther’s case come up before the TTAB because an examining attorney at the Patent and Trademark Office had initially rejected its registration application. The TTABlog®, which tracks TTAB decisions and news, identifies only three other successfully registered product configuration trademarks since 2000 — Baldwin key headsCartier watches, andSchumacher wallpaper sample books (to the last of which, I can only respond, whose what now?). That’s because, to register a product configuration as a trademark, an applicant must show not only that its product design has acquired distinctiveness, but also that the design itself is not functional — that is, not vitally tied in to the product doing what it’s actually supposed to do.

But it’s a big wide, world out there, with lots of manufacturers making lots of products, and that means that some pretty interesting trademark registrations ultimately get through. Selling hot pink fiberglass insulation? Expect a stern call from Owens-CorningGold-green dry cleaning pads? Lawyers at Qualitex will be busting out their favorite form demand letter. And trade dress protection — which is generally administered through the courts without the benefit of PTO-issued registrations — has been used to protect everything from the (nauseating) design and color scheme of Taco Cabana eateries to the (awesome) shelving and organizational schemeof Best Cellars wine shops.

But even if Walther hasn’t issued the requisite press release, here at Law Law Land, we want to recognize the Cheeto-munching, beer-chugging, Mountain Dew-swilling heroes who made this possible. Well done.

Next step: seeking some much needed protection for a unique and precious source of entertainment news and analysis on the Internet. See you at the TTAB.

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