Gun manufacturer turns to 007 for help with trademark case
Over the years, fictional superspy James Bond has extracted himself from a number of tough spots. In the case of In re Carl Walther GmbH, a gun manufacturer turned to 007 for help overcoming a rejected trademark application, reports Lexology
Walther filed an application for a trademark on the product configuration design of firearms, pistols and air soft guns (the âPPK handgun designâ). The trademark examiner rejected the registration on the grounds that the design wasnât inherently distinctive â and the examiner wasnât persuaded by Waltherâs argument that the PPK handgun design had acquired distinctiveness. Walther appealed to the Trademark Trial and Appeal Board (TTAB).
The TTAB explained that an applicant for a trademark registration shoulders a heavy burden when attempting to establish the distinctiveness of a product design. The applicant must show that consumers perceive the product configuration as identifying the source of the product and not just as the product itself.
In support of its position, Walther submitted a variety of direct and circumstantial evidence â including a consumer recognition survey and declarations from individuals attesting to the âdistinctiveness and notorietyâ of the PPK design. Walther also contended that the handgun had a âdefinite auraâ and âmystiqueâ surrounding it, as a result of being known as âJames Bondâs gunâ and through years of âextensive use and repeated appearance in pop culture.â
The TTAB reversed the trademark examinerâs refusal to register, finding Waltherâs evidence persuasive. In the consumer survey, for example, more than half of the participants associated the PPK handgun design with a single source and about one-third could correctly identify the source. The board cautioned, however, that the survey results alone werenât conclusive evidence in establishing acquired distinctiveness but should be considered along with other evidence in the record.
In this case, the other evidence included expert testimony. An expert witness on handguns and the marketplace for handguns testified that 1) consumers do consider a handgunâs design when deciding whether to buy it, and 2) the Walther PPK is one of the most recognizable handgun configurations by handgun consumers.
Turning to circumstantial evidence, the TTAB noted that the evidence showed Waltherâs âsubstantial effortsâ to promote the PPK handgun since its introduction in the United States in 1968. The company advertises the gun extensively in trade publications, on websites and in various magazines featuring firearms. For the period 2004â2007 alone, Walther spent about $920,000 for such ads. The ads often feature full pictorial representations and tout âsleek, elegant lines [that] have excited shooters from the moment [the PPK handgun] was created over 75 years ago.â
The TTAB also acknowledged the extensive unsolicited media exposure received as a result of the PPK handgun being used as a prop in nearly all of the James Bond films for about 40 years, being referred to as âJames Bondâs weapon of choice.â The board resisted concluding that the PPK handgun has become distinctive among consumers of handguns simply because the design has been recognized by filmgoers, but acknowledged that recognition by filmgoers indicated a certain level of notoriety or fame.
Interestingly, the TTAB found that the popularity of the PPK design was further reflected in the fact that itâs imitated, under license, in replica products. The board reasoned that âa party would only attempt to replicate another partyâs trade dress or product configuration, under license or not, if that trade dress or product configuration is perceived by the consumers as distinctive.â
Product configurations donât immediately qualify for trademark protection. So In re Carl Walther GmbH offers some valuable insight on how to increase the odds of successfully obtaining trademark protection for a product configuration.
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