Sunday, November 07, 2010

Walter GmbH overcomes Dr. No at patent office

Walter GmbH sought a trademark on the James Bond Walter PPK:

The mark consists of the three-dimensional
configuration of a pistol. The mark includes the
overall size and shape of the pistol and the
external accents and features of the pistol.

There was an initial refusal to register, but, in the end, Walther prevailed.

The TTAB noted:

The fact that the PPK handgun design is sought after
and licensed to a maker of replica products has been
recognized as one type of evidence that helps establish
that a configuration or trade dress mark has become
distinctive. See, e.g., Coach Leatherware Co. v.
AnnTaylor, Inc., 933 F.2d 162, 169 (2d Cir. 1991)
(intentional copying of another party’s mark constitutes
“persuasive evidence of consumer recognition”); see also,
Hartford House Ltd. v Hallmark Cards Inc., 647 F.Supp. 1533
(D.Colo. 1986) (the fact that a party licenses its greeting
card trade dress for different goods “demonstrate[s] that
the distinctive look is recognized in the market as having
a value separate from the [greeting] cards”).

But note

We would be remiss if we did not acknowledge
that the examining attorney is somewhat handicapped
inasmuch as he does not have access to the same evidentiary
resources as counsel for applicant or that of a party in an
inter partes proceeding.12

with footnote 12:

Our conclusion in this ex parte appeal would not, of course,
preclude the Board from reaching a different result in a
subsequent inter partes proceeding brought against this same
application by a competitor of applicant, if the competitor was
able to present evidence showing that the PPK handgun design has
not acquired distinctiveness.

But, the bottom line:

The refusal to register is reversed. The
application will be forwarded for publication for


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