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Trademark Review - Philips Electric Toothbrush and McSweet

Philips Fails to Establish its Electric Toothbrush Design is Recognized as a Trademark

Philips sought to register the base assembly design of its electric toothbrushes (shown below) as a trademark:

Product designs are not considered inherently distinctive, but may be registrable upon a showing of acquired distinctiveness pursuant to Section 2(f) of the Trademark Act.

For a product design, the evidence provided to establish acquired distinctiveness must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.

In support of its claim of acquired distinctiveness, the Applicant introduced the following evidence:

  • a statement that the mark has been used for more than ten years;
  • a claim of ownership of a cancelled registration for a mark the Applicant claims is “substantially the same”;
  • evidence that between 2002-2011, over 72 million units of the Applicant’s goods were sold in the United States; and
  • samples of product packaging from the Applicant’s competitors for products that are “designed to fit” the Applicant’s products.

The Examining Attorney refused registration on the basis that the Applicant did not establish the design has acquired distinctiveness. The TTAB agreed and affirmed the refusal to register the product design for at least the following reasons.

First, the Board did not allow reliance upon the expired registration.

Second, the Board acknowledged that the evidence of the Applicant’s sales was “not insubstantial,” but found that a high volume of sales does not always amount to a finding of acquired distinctiveness, especially for product design. What was missing was evidence of a connection between those sales and the Applicant’s advertising that promotes the product design. Merely including a picture of the product in advertising may not be sufficient to establish that consumers recognize the design feature as a trademark.

Third, the Applicant’s evidence that competitors show the product design on packaging to sell replacement toothbrushes was not persuasive. The Board found that the evidence did not show an intent to copy the Applicant’s base assembly design; rather, it only showed that the competitor’s replacement toothbrushes will serve as a substitute for the Applicant’s base assembly product.

In re Koninklijke Philips Electronics N.V., Serial No. 85092079 (T.T.A.B. September 26, 2014) [precedential].


MCSWEET Gets Pickled: The Board Refuses Registration of MCSWEET for Pickled Vegetables on the Grounds of Confusingly Similarity to, and Likely Dilution of,McDonald’s Family of “MC” Marks

McSweet, LLC filed applications to register the mark MCSWEET for pickled vegetables. In its opposition, McDonald’s asserted dilution of and likelihood of confusion with eleven registered “MC” formative marks.

McDonald’s asserted that it owns a “family” of marks consisting of “MC” followed by a generic or descriptive term (such as “McRib” and “McMuffin”) and that both its MCDONALD’S and its “MC” family of marks are famous. A family of marks is an additional factor weighing in favor of likelihood of confusion. The Board focused on the family of marks claim, but considered the fame of the MCDONALD’S mark as contributing to the fame of the family of “MC” marks. Based on its extensive use and promotion of these marks, the Board agreed that McDonald’s owns a family of “MC” marks. Based on the evidence, including the 14,000 MCDONALD’S restaurants in the U.S. serving 26 million people per day, the Board agreed that the family of “MC” marks is famous for purposes of likelihood of confusion. The Board found that MCSWEET is similar to the family of “MC” marks and the goods are at least related. In fact, the Board found all of the relevant factors supported a finding of likelihood of confusion.

Although the Board found likelihood of confusion, the Board also considered McDonald’s claim that MCSWEET will dilute the famous “MC” family of marks by blurring the distinctiveness of the family characteristic of those marks. The Board found that the family of “MC” marks is recognized by the general consuming public as a designation of source of McDonald’s goods and services, and thus, is famous for dilution purposes. The Applicant, however, had used the MCSWEET mark since at least 2006 and claimed use on some of the goods since 1990. Nevertheless, the Board found that McDonald’s established sufficient fame in its marks dating back to at least 1986, prior to the Applicant’s earliest use of MCSWEET.

To show dilution by blurring, McDonald’s submitted a consumer survey showing that 67% people associated the term MCSWEET with McDonald’s, primarily because of the “MC” prefix.

Thus, the Board found likelihood of confusion and that MCSWEET was N likely to impair the distinctiveness of McDonald’s family of “MC” marks, and that it was therefore likely to cause dilution by blurring.

McDonald’s Corp. v. McSweet, LLC, Opposition Nos. 91178758 and 91192099 (T.T.A.B. April 9, 2009) [precedential].