In re Carl Walther GmbH: TTAB Reverses Refusal to Register Walther PPK Product Configuration

In re Carl Walther GmbH, No. 77096523 (T.T.A.B. Oct. 26, 2010)

Opinion

The Trademark Trial and Appeal Board (the “Board”) reversed an examiner’s refusal to register the product configuration of the Walther PPK pistol as a mark under Section 2(f) of the Trademark Act.

The Board held, contrary to an examiner’s evaluation, that applicant Walther had established acquired distinctiveness for the configuration. Walther presented a variety of direct and circumstantial evidence, including a survey of gun enthusiasts, expert testimony, and Walther’s advertising efforts, as well as a 40-year history of unsolicited media exposure supplied by the PPK’s most notorious devotee, James Bond.

The TTABlog and Likelihood of Confusion comment on the Board’s decision, ascribing the result primarily to the instinctive persuasiveness of the Bond-related circumstantial evidence.

German gun maker Carl Walther GmbH filed its application to register the PPK’s product configuration as a mark in February 2007, seeking “registration under Trademark Act Section 2(f).” The registration was denied because the examining attorney found that the design of the gun lacked acquired distinctiveness. On appeal, the Board notes that “to establish acquired distinctiveness, an applicant must show that the product configuration is perceived by consumers as not just the product but, rather, that the design identifies the producer or source of the product.” Walther presented direct evidence in the form of a consumer survey, which reported that 54% of those surveyed could identify the PPK based on its shape and 33% knew that Walther made it. Walther also called on gun expert S.P. Fjestad, who called the PPK one of the most recognizable pistol configurations on the market. The company provided circumstantial evidence as well: it cited its own PPK marketing campaign and the unsolicited exposure the gun enjoyed for being “James Bond’s gun.” It also pointed to the fact that the PPK is imitated under license and presented testimony from a licensee’s marketing manager.

In a brief filed after the registration was denied, the examining attorney said the PPK was too similar to other pistols in the market and argued that Walther’s evidence was unconvincing. Its ad campaigns for the PPK, he said, never gave consumers any means to identify it. The survey established only that the gun’s silhouette (not its configuration) was recognizable, and in any case only surveyed gun enthusiasts, not the general public. The examining attorney also said that the individual declarations provided by Walther were insufficient because they were the opinions of gun experts and evidenced nothing about the public’s knowledge of the PPK.

The Board’s three-judge panel reversed the examiner’s refusal, primarily because it was more convinced by the evidence. The barrier faced by applicants in this context is high, but no standards govern the amount of evidence required. The Board decided the survey was at least persuasive, if not conclusive, because the percentages of consumers recognizing the PPK’s configuration and its source were in line with previous cases in which acquired distinctiveness was established. The Board also felt that the survey was appropriately targeted at gun enthusiasts because they, not the broader public, would be the product’s most likely consumers. It saw Fjestad as an expert not just on guns but also on the gun marketplace, making his testimony persuasive. And, although the Board questioned whether the Bond films’ obvious effect on the public’s PPK recognition was evidence of a similar effect on consumers of handguns, it still found that some of the responses to Walther’s survey clearly demonstrated that the Bond films have “influenced handgun consumers and their recognition of the PPK handgun design.” Lastly, the Board also cited prior cases in which licensing agreements were recognized as evidence for establishing acquired distinctiveness.

As John L. Welch notes in his TTABlog post, “[r]arely does a product configuration mark pass TTAB muster.” The Board’s analysis today provides some valuable guidance to future applicants as to when a product configuration may have acquired distinctiveness as a mark. However, its totality-of-the-circumstances argument leaves unclear which pieces of evidence, if any, are key in such an analysis.

Charles Griffin is a 1L at the Harvard Law School.