There was good news for those companies that have products with unique designs at the US Patent and Trademark Office (PTO). The PTO found that the design of a monster truck could be protected and registered as trade dress for the “services” offered by the owner.
Frankish Enterprises Ltd. (Frankish) is the proprietor of monster truck entertainment services offered in connection with its JURASSIC ATTACK monster truck (shown right).
Believing the design of its JURASSIC ATTACK truck was unique and functioned as a trademark, Frankish filed an application for the mark covering “entertainment services, namely, performing and competing in motor sports events in the nature of monster truck exhibitions.”
The Examining Attorney at the PTO refused the application, finding that the proposed mark (shown right) “will not be perceived as [a] source indicator for the services” because “monster trucks normally appear in a wide variety of designs.” In other words, the truck’s design was not so unique that consumers would recognize it as tied directly to Frankish. Instead, it was just one more monster truck in a crowded field.
Frankish appealed the decision at the PTO to the Trademark Trial and Appeal Board (TTAB). The TTAB reversed the refusal, relying on well-settled law stating that while trade dress in the nature of product design can never be inherently distinctive (and would therefore require proof of acquired distinctiveness to be registrable on the Principal Register), product packaging and trade dress for services can be inherently distinctive. Here, Applicant did not seek registration for a product (i.e., a monster truck); instead, it sought registration for services (i.e., monster truck exhibitions). Thus, the TTAB found that the proposed mark could be inherently distinctive. The TTAB then found that while there are many different types of monster trucks in existence, including some depicting animals, Frankish’s monster truck design was “unique” and “unusual” in the field and therefore was inherently distinctive. In other words, the appearance of the truck was so unique that it functioned as a trademark for Frankish’s monster truck services.
This case is a useful reminder that trademarks come in all shapes, sizes, colors, and smells. For assistance evaluating whether your product packaging or product design functions as a trademark, please contact Sarah L. Bruno, Anthony V. Lupo, and Amy E. Salomon.