Barbour Files Application to Register Jacket Design as a Trademark

Think Barbour jackets have a distinctive look? Barbour does, and the clothing company is seeking to protect that look through a federal trademark registration.

On December 13, J. Barbour & Sons Ltd. filed a federal trademark application with the U.S. Patent and Trademark Office for the jacket configuration seen below.

Note that Barbour is not seeking to register the entire jacket design. The areas depicted by dotted lines are not part of the mark. Instead, Barbour describes the mark as follows:

The mark consists of a three-dimensional configuration of an outerwear design featuring a combination of the following elements: (a) four pockets placed and oriented as follows: two on each of the front left and right side beginning at the mid-breast of the jacket and extending to the waist of the jacket; two large pockets on each of the left and ride side of the jacket beginning at the waste [ed. - sic] and extending to just above the bottom of the jacket both with exterior flap closures and two eyelets on the underside of the front pockets; (b) a metal zipper pull configured in a ring shape with the top quarter of the ring being solid on a two-way opening zip; (c) a collar made of corduroy with detachable throat cover; and (d) a studded flap that closes over the entirety of the front zipper on the middle of the jacket. 

The application covers "Clothing and outwear, namely, coats and jackets" in Class 25 (not surprisingly). According to the application, Barbour has been using this design as a trademark since 1980.

As I've blogged about before, a product design trademark (often referred to as "trade dress") can be registered as a trademark if it is (1) non-functional and (2) inherently distinctive or has acquired distinctiveness in the marketplace. TMEP 1202.02; TrafFix Devices, Inc. v. Mktg.Displays, Inc., 532 U.S. 23, 28-29 (2001).

Generally, to show this coat design is non-functional, Barbour will need to demonstrate that the features it seeks to register are not essential to the use or purpose of the article and do not affects the cost or quality of the article. TMEP 1202.02(a); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). For example, Alexander Wang (which I previously blogged about) is having difficulty showing that its configuration for several zippers on a handbag isn't functional, in part because (1) Alexander Wang's advertising stated that the separate zipper compartments are for "multi functionality" and (2) several other designs from third parties incorporated zippers in the same areas, indicating there is not a wide variety of alternative designs available to competitors.

If Barbour can demonstrate that its jacket trade dress is not functional, it must show that the design has acquired distinctiveness in the marketplace, because product designs are never inherently distinctive. Wal-Mart Stores, Inc. v Samara Bros., 529 U.S. 205, 215 (2000). Generally, that means Barbour will need to submit convincing evidence demonstrating to the USPTO that when consumers see the jacket design Barbour seeks to register, they recognize it as a Barbour jacket (not just any jacket).

So, is Barbour's pocket placement, zipper design, and zipper flap essential to the use or purpose of the jacket? Are there other alternative jacket designs available to competitors? Or would designing around this configuration be too costly? Do you recognize this configuration as a Barbour jacket?

Like Alexander Wang, Barbour may have a difficult time convincing the USPTO that this trade dress is registerable. We'll see what the USPTO thinks in approximately three to four months when this application is reviewed by an examining attorney.

Sig Sauer Files Applications to Register "Three-Dimensional Configuration of a Pistol" as Trademark

On August 21st, Sig Sauer, Inc. filed a federal trademark application not for a word or a logo, but rather for "the three-dimensional configuration of a pistol." The drawing submitted with the application is seen below.

The application describes the mark as including

the overall size and shape of the pistol and the external accents and features of the pistol. The mark includes the relative proportions of the external accents and features of the pistol, including (1) the angle and shape of the grip in relation to the slide; (2) the size and shape of the trigger guard; (3) the length, depth, and shape of the relief cuts on the sides of the slide; (4) the angle, shape, size, and separation of the lines and ridges on the slide (slide serrations); and (5) the size and shape of the exposed portion of the hammer. The dotted lines indicate features that are not claimed as a part of the mark, including: the shape of the front and rear sight, the shape of the trigger, and the exposed portion of an inserted magazine.

The specimen submitted with the application (which is supposed to show the mark as seen by the public) is below.

It is possible to register the design of a product, a type of trade dress, as a trademark, but there are a couple more hoops an applicant must jump through to obtain the registration.

To start, trade dress that is functional, or "essential to the use or purpose of the article or if it affects the cost or quality of the article" is not registerable. 15 USC 1052(e)(5); TMEP 1202.02(a); Qualitex Co. v. Jacobson Prods. Co., 34 USPQ2d 1161, 1163-64 (1995). The test for functionality is complex. For a better explanation of functionality than I can ever make, see John Welch's article here.

If the aspects of the product design sought to be registered are not functional, the trade dress must also have acquired distinctiveness in the marketplace. See TMEP 1202.02(b)(i) ("A mark that consists of product design trade dress is never inherently distinctive and is not registrable on the Principal Register unless the applicant establishes that the mark has acquired distinctiveness..."). An applicant faces a "heavy burden in establishing distinctiveness in an application to register trade dress." Id. Generally, the applicant must establish through a combination of a convincing amount of advertising, sales figures, length of use, survey evidence, survey evidence, etc. that the public has come to recognize the applicant as the source of the product embodied by the design.

In sum, if the applicant can establish that the product configuration is (1) non-functional and (2) has acquired distinctiveness, it can be registered as a trademark on the Principal Register.

Interestingly, on the same day the application above was filed, Sig Sauer filed two other applications for slight variations of the gun design. Those applications are here and here. It may be that Sig Sauer hopes, by slightly tweaking the elements claimed in the application, it can get at least one of these applications through the registration process.

According to my quick search, these are the first trademark applications for a gun design filed by Sig Sauer.

What do you think? When you see the gun configuration above, do you think of Sig Sauer?