In a recent decision from the United States Trademark Trial and Appeal Board (TTAB), In re IGT, the TTAB affirmed the Examiner’s refusal to register geometric shapes covering gambling machines.
This decision is a good example of the challenges brand owners may have in obtaining trademark registrations for geometric shapes in the United States. Here, the TTAB determined that the applicant used the shapes as borders for information or as background, rather than as a trademark.
Generally, in the United States, it is challenging to obtain registrations for common geometric shapes like circles, squares, triangles, ovals, and rectangles. It is nearly impossible to register marks for geometric shapes when used as background. When used as background, the trademark examiner will likely determine that those shapes are not inherently distinctive. This determination requires the applicant to provide evidence to prove that it has acquired distinctiveness, which means that consumers understand the geometric shapes to be a source indicator due to an applicant’s extensive and continuous use in United States commerce. Evidence can include the duration and extent of use of the geometric shapes as marks, advertising, and promotional materials, third-party media coverage, survey evidence, evidence of actual confusion, or evidence that another copied the geometric shapes at issue.
In this case, Applicant IGT was refused registration by the Examiner for geometric shape designs covering “gaming machines, namely, devices which accept wages.” The applied-for marks included the below marks, which the Examiner effectively determined to be basic geometric shapes. The Applicant also filed applications for non-color versions of the same marks:
The applicant submitted pictures of a gaming machine and portions of its display as specimens as evidence of the use of the applied-for marks in U.S. commerce:
The Examiner found the shapes (1) failed to function as trademarks and (2) had not acquired distinctiveness. The TTAB affirmed the refusals. The Board agreed with the Examiner on both points.
The Board found that the shapes do not function as marks and are not inherently distinctive because:
The Board also found that despite 20 years of use, the Applicant failed to prove acquired distinctiveness because:
This decision affirms the challenges for brand owners to obtain trademark registration for common geometric shapes in the United States. If those shapes are being merely used as background or border, and not as a primary brand, the ability to obtain a registration seems nearly impossible. This decision reminds trademark owners not to double down on commonly used shapes. If you do, the House will likely win.
If you have any questions regarding this post or any other related matters, please email Robert C. Gabrielski, Chair of the Norris McLaughlin International Business and Tax Planning Group, at email@example.com.