Applicant IGT's appellate gamble didn't pay off, as the Board affirmed nine (IX) failure-to-function refusals of certain geometric shapes as trademarks for gaming machines. The shapes appear on the displays of video poker machines sold by IGT. The Board found that the proposed marks were not inherently distinctive and lacked acquired distinctiveness. In re IGT, Serial Nos. 87448071, 87448088, 87448100, 87448105, 87448113, 87448123, 87448129, 87448137, 87448145 (January 10, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).
The Board observed that there are actually four alleged marks at issue, but three of the four are presented in a black and white version and a color version. One of the alleged marks is presented in black and white, in color, and in black and white with shading to indicate contrasting colors. That adds up to nine.
Examining Attorney Frank Latucca maintained that each of the shapes involved "a common background shape" with "nothing to suggest a consumer would view it as identifying a brand."
The Board began its evaluation of the shapes "by noting what they are not." They are not part of, or background to, distinctive composite trademarks. Rather they serve as frames for information relevant to the video poker game being played. "The game information presented within the shapes is not distinctive. No other allegedly distinctive elements are joined with the shapes."
In In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018), the Board noted, "Most common geometric shapes, such as circles, squares, triangles, ovals, and rectangles, when used as backgrounds for the display of word marks, are not considered inherently distinctive, and have difficulty acquiring distinctiveness."
The Examining Attorney provided samples of other video gaming displays that use similar common geometric shapes as borders for information. The manner in which applicant's shapes and colors are used was an additional reason that these designs are not inherently distinctive marks: as borders for information about the game being played. The presentation of other branding on the displays further reduced the likelihood that consumers will immediately recognize the shapes (and colors) as distinctive trademarks.
The Board concluded that the shapes are not inherently distinctive.
The Board then considered the issue of acquired distinctiveness. Applicant IGT claimed a long period of use (20 years) and submitted evidence of its sales volume to establish that it is a leading manufacturer of video poker machines. Advertising showed the promotion of Applicant's video poker machines within the gaming industry, and IGT claimed that the shapes at issue have received unsolicited media attention.
The Board was not persuaded. It found that these designs fail to satisfy a basic requirement: "There must be something about the exposure that leads relevant consumers to view the symbol as a trademark." The Board looked to In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026 (TTAB 2010), for guidance. There a pole spanner design used with gasoline pumps was found not to have acquired distinctiveness. First, the Board noted that for common shapes and designs, very strong evidence of acquired distinctiveness is needed. Second, even 20 years of use and hundreds of millions of exposures to the design were not sufficient to prove acquired distinctiveness.
In In re General Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017), the color yellow for cereal was found to lack acquired distinctiveness despite use on Cheerios boxes for seventy years. The decision was based in part on the fact that the yellow boxes also featured the CHEERIOS trademark. and so "there was little reason for consumers to rely on the yellow color of the box as a source identifier."
The same logic was applicable to the Chevron case described above and to the present appeals. Applicant's video poker machines are branded products, making these appeals analogous, in this sense, to both the General Mills and Chevron decisions. Consumers seeing the common geometric shapes that Applicant now claims as trademarks are unlikely to view such features as brands when other prominent branding is present on the machines.
Moreover, IGT's advertising did not call the attention of consumers to these shapes as source identifiers, but simply showed the video poker products and touted the features of those products. Similarly the media references did not make any mention of the specific shapes and colors that IGT claims as marks.
This evidence falls far short of proving acquired distinctiveness. At most, it suggests that some consumer may recognize an IGT video poker machine from its overall look and sounds. That is a far cry from showing that a specific feature on the display is a distinctive trademark. The specimens of record clearly show prominent branding on these machines. It is hardly surprising that someone familiar with these machines can easily spot them on a casino floor.
The Board concluded that the proposed marks fail to function as source indicators, and so it affirmed the refusals to register under Sections 1, 2 and 45 of the Trademark Act.
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