Grip Studios applied for the configuration mark described as a 3D “configuration of a hand” for “musical instrument accessories, namely stands, instrument hangers” in Class 15. Drawing and specimen, respectively, to support the application are as follows:
The USPTO assigned the design code 02.11.07 Arms, Fingers, Hands, Human hands, fingers, arms. A search of this design code along with Class 15 for musical instruments reveals the following designs:
The Examining Attorney issued an office action with the following objections (i) functional – “when the evidence shows that the design provides identifiable utilitarian advantages to the user”; (ii) non-inherently distinctive configuration – “product design can never be inherently distinctive as a matter of law; consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source”; and (iii) modifications to the description of the mark.
Grip Studios explained that its mark is not functional, that is, the “goods are a guitar holder. The holder part of the product is not claimed as a feature of the mark. The design of a hand is designed around the functional portion of the product and has no functional purpose”; and the mark has acquired distinctiveness based on over 10 years of use in conjunction with “look for” advertising such as “marketing of the hand as a trademark to associate the hand design with the goods” and using the “tagline ‘hand made in Detroit’ with the term ‘hand’ highlighted …
to promote the association of Applicant’s hand design mark with Applicant as the source of these goods.”
The original mark description, a 3D “configuration of a hand” was modified to a 3D “configuration of a left hand.”
The Examining Attorney accepted the response with the application approved for registration. A registration (U.S. Reg. No. 5694753) issued March 12, 2019.