Worldwide Dynasty, Inc. (later changed to H2W dba Sunstaches) filed for two different versions of mustache sunglasses (shown above) each described as a 3D configuration of “a plastic mustache hanging from two vertical chains. These chains are affixed to the bottom portion of a pair of eyeglasses. The area depicted in dotted lines [sunglasses] is depicted to show placement of the mark only.”
The two versions of the mustache sunglasses, from left to right below, are the Fu Manchu and The Handlebar:
The Examining Attorney initially issued an office action refusing registration of the marks (i) as functional because the first version of the drawings included the sunglasses (i.e., no dotted lines on the sunglasses which meant H2W claimed the sunglasses as part of the mark. However, functional matter is not registrable); and (ii) the marks consist of non-distinctive product design.
In response, H2W amended the drawings to include dotted lines on the sunglasses and provided information that the mustache designs have acquired distinctiveness.
The Examining Attorney accepted the new drawings but did not accept the acquired distinctiveness claim stating, “[a]lthough the evidence indicates that … [H2W’s] novelty glasses are popular, there is no evidence establishing that source indication is ascribed to the configuration of the goods themselves. … Nothing on … [its] website or social media page illustrates that the very shape of the goods has trademark significance.” (As noted in my previous Blogs and in my July 2015 Newsletter, this is a common issue for non-traditional marks, i.e., how does the trademark owner prove that the unconventional design, while interesting, is also a source identifier).
Despite several office actions on the same distinctiveness issue, H2W did not give up and continued to provide further information. In its Request for Reconsideration (after the issuance of the Final office action), H2W provided numerous third party articles about the products such as the article at Outblush about The Original Mustached Sunglasses:
This additional information tipped the scales and the Examining Attorney accepted the applications. Registrations (U.S. Reg. Nos. 4853492 and 4853493) issued on November 17, 2015.
Blog by: Mary B. Aversano
Aversano IP Law | aversanoiplaw.com
E: Trademarks@aversanoiplaw.com | T: (310) 904-9380
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