In re Audemars Piguet Holding SA was a precedential decision handed down by the Trademark Trial and Appeal Board (TTAB). The case concerned trade dress, and had some surprising twists and turns.
Audemars Piguet (Audemars), maker of luxury watches, filed an application for the trade dress in the design of two of their watches. The application tried to register only certain parts of the design: the octagonal bezel around the watch and eight hexagonal shaped screw heads. However, the examining attorney rejected the application, finding two fatal flaws in the application, and the TTAB agreed with the examining attorney that the applications should be rejected.
The first problem was simply a technical objection, but the applicant, or their attorney, refused to amend their application to address the objection.
While Audemars claimed that only its octagonal bevel and the eight hexagonal-shaped screws were distinctive of its watches, the application did not use any dotted or dashed lines, which would have represented those elements excluded from the claimed trade dress. Instead, the drawing for the application showed the entire watch in solid lines, which included some parts that were functional. Functional components can’t be asserted as trade dress because that would prevent other producers of such products from selling other things that are functional. For example, the drawing did not exclude the watches’ circular faces — a feature that most watches have.
The TTAB said the fact that the applicant neglected to portray these functional elements in dotted lines, so that the claimed trade dress would exclude those elements, was reason enough to refuse registration of the trade dress.
The second problem that the applicant faced was whether the elements they claimed to be distinctive actually were distinctive enough to serve as trade dress. Trade dress requires the design of a product to be so distinctive that the relevant consumers associate the product with a single source (that is, the trade dress design serves as a trademark).
Audemars provided over 50 years of advertisements and catalogs featuring the watches — but those advertisements had several problems. First and foremost, not all the watches in the ads had the design that was being claimed as trade dress. Some showed flat-head screws, for example, and that inconsistency undermined the plaintiff’s argument. Secondly, people may very well be buying the watches because they look good (or look impressive, or look expensive…), not because the design signifies a particular source of watch manufacturers.
Further dooming the applicant’s claims, the Board noted the lack of a “look for” alert in any of the advertisement specimens, such as “Look for the octagonal bevel, and those hexagonal screws” to put consumers on notice about how to identify genuine products. Such warnings might have saved the application from this portion of the analysis.
Frankly, I don’t know why the applicant refused to submit a new drawing that outlined in dotted lines all the elements other than the distinctive bevel and screws. Was the designer contact at Audemars too busy to provide a new technical drawing, or the attorney unable to get a decision-maker’s authorization? It appears that failing to respond to the Examining Attorney’s request contributed to dooming this application, even without consideration of proving distinctiveness.
It also confirms that registering trade dress is generally difficult, for all the right reasons: The PTO doesn’t want to hand out monopolies on functional designs and prevent others from making legitimate, competing products.
