TTAB Decisions and Developments

JANE SHAY WALD
Irell & Manella LLP

To Register Designs You Must Use Broken Lines To Indicate The Things You Cannot Claim You Can Use A Solid Line Where Appropriate, It’s Fine The Requirements For Each Are Not The Same

THE BOARD UPHELD THE EXAMINING ATTORNEY’S REFUSAL to register two marks for watch designs for failing to comply with the USPTO’s drawing requirements. While most of the 51-page opinion focuses on the marks’ lack of acquired distinctiveness, those principles were explored only in the context of why the drawings at issue were defective. "Neither refusal is based on lack of acquired distinctiveness of the entire designs or on the functionality of the entire designs. Rather, both refusals are based on the inadequacy of the drawings provided by Applicant, and Applicant’s refusal to comply with the requirements issued by the Examining Attorney to revise the drawings." The drawings depicted several elements of the watch designs in solid lines. Solid lines indicate features of the marks sought to be registered. Because some of these features lacked trademark significance, they must be depicted in "dotted or broken lines." Applicant disagreed, to no avail.

The Board found Applicant’s evidence showed consumers recognized its "octagonal bezel with eight hexagonal screw heads" as a nonfunctional source indicator. Use of a solid line for that element of the drawing was therefore correct. The Board found insufficient evidence to show that an additional combination of elements on the same product indicated source. Such non-distinctive elements must be drawn in broken (dotted) lines. Applicant argued that "a drawing requirement to depict less than the entirety of a design in dotted lines lacks any legal basis." It challenged whether there is authority for imposing a drawing requirement to "dot out" parts of the design based on the failure to prove acquired distinctiveness of the entire design. The Applicant’s position is that if distinctiveness is proven with respect to only part of the design sought to be registered, there is no basis to "call out" the registrable elements. This made little sense to the Board, who rejected it. The Board, in Footnote 37, compared the situation to descriptive word marks: