United States Trademark Trial and Appeal Board Decision Makes Registration for Geometric Shapes a Tough Bet

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.

Introduction

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 re IGT Trademark Registration

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 shapes serve as a frame for information relevant to playing the video poker game; and therefore, consumers will not immediately rely on those shapes as marks.
• Geometric shapes, when used as backgrounds for the display of word marks, are not inherently distinctive, e.g., , .
• The shapes were merely part of the poker machine displays and did not stand out as marks.
• The shapes were used numerous times and relevant to the gameplay and its instructions, rather than being used as a trademark.
• Other branding used on the display reduces the likelihood that consumers will recognize the shapes as trademarks.

The Board also found that despite 20 years of use, the Applicant failed to prove acquired distinctiveness because:

• The evidence did not show that consumers perceive shapes as trademarks because other prominent branding is also present on the gaming machines.
• The applicant did not use shapes in promotions (“look for” advertising).
• Media coverage did not reference the shapes.
• The applicant offered no direct evidence of acquired distinctiveness (surveys, actual confusion, copying).

Conclusion

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.