Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
ESTTA Tracking number: ESTTA312220
Filing date: 10/19/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 77096523
Applicant Carl Walther GmbH
Correspondence KAREN A. BRENNAN
Address WINTHROP & WEINSTINE, P.A.
225 S 6TH ST STE 3500
MINNEAPOLIS, MN 55402-4629
UNITED STATES
sbaird@winthrop.com
Submission Appeal Brief
Attachments Appeal Brief.pdf ( 25 pages )(162470 bytes )
Filer's Name Karen A. Brennan
Filer's e-mail sbaird@winthrop.com, kbrennan@winthrop.com, trademark@winthrop.com,
aeichrodt@winthrop.com
Signature /Karen A. Brennan/
Date 10/19/2009
 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK TRIAL AND APPEAL BOARD
____________________________________________________________________________

In re Application of: Carl Walther GmbH

Application No.: 77/096,523

Filed: February 1, 2007

MARK:
________________________________________________________________________________

APPLICANT’S APPEAL BRIEF

________________________________________________________________________________

Applicant, Carl Walther GmbH (“Applicant” or “Walther”), takes appeal of the Examining

Attorney’s final refusal to register its trademark (“PPK Design” or “Design Mark”) as a non-

distinctive configuration of goods under Trademark Act Sections 1, 2 and 45. The sole stated basis

for the refusal is that the Examining Attorney is not persuaded Applicant’s Design Mark has

acquired distinctiveness under Section 2(f) of the Trademark Act. Applicant respectfully submits

that the unrebutted record evidence easily makes out a prima facie case of acquired distinctiveness.

I. INTRODUCTION

The Walther PPK has a definite “aura”1 and mystique surrounding it, arising originally

through its widespread use by German forces during World War II2 and growing in the United

States in the 1960’s with its extensive use and the repeated appearance of the PPK Design in

popular culture. The Walther PPK is James Bond’s gun. The PPK Design has been visible in

movies, on posters, and utilized in promotional items corresponding with the Bond movies since

1
See Response to Office Action dated Jan. 20, 2009, Exhibit 18 (first James Bond article describing the aura
surrounding the PPK handgun).
2
Walther produced more than 150,000 PPK handguns during the war. Id., Exhibit 17 (article from the
Unofficial Walther Home Page).
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the early 1960’s. Indeed, a veteran expert in the handgun industry, the author and publisher of

Blue Book of Gun Values for the last 20 years, describes the PPK Design as “iconic,” due in large

part to its vast exposure in popular culture. Moreover, the PPK Design has been described by other

gun commentators as “undeniably one of the world’s most recognizable handguns,”3 “an icon,”4 a
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“trademark gun,”5 “legendary”6 a “landmark” gun,7 and “classic.”

Applicant has submitted substantial, indeed almost overwhelming, evidence as to the

acquired distinctiveness of its PPK Design, including direct survey evidence that 54% of relevant

consumers believe the PPK Design comes from a single source. Additional evidence includes

Applicant’s substantially exclusive use of the Design Mark in the United States for over forty

years, numerous declarations from individuals in the firearms industry attesting to the

distinctiveness and notoriety of the PPK Design, evidence as to the significant advertising

expenditures related to the PPK Design, representative samples of advertising and promotional

materials prominently displaying, highlighting and discussing the PPK Design, and substantial

evidence of unsolicited media coverage the PPK Design has received in popular culture. The

record evidence shows that the relevant public recognizes the mark sought to be registered, the

external shape and design of the PPK pistol, as coming from a single source. The PPK Design is

the PPK is the non-verbal equivalent of the PPK trademark; consumers link it to PPK (a trademark

coming from a single source), they link it to WALTHER (a trademark coming from a single

source), and they link it to the substantial Bond lore, where Mr. Bond has been visually loyal to the

PPK since 1962, spanning 17 different Bond movies, grossing over nine billions dollars.

While Applicant acknowledges that each application to register a product configuration

mark is reviewed and decided on its own merits, Applicant has gone above and beyond its prima

3
Id., Exhibit 5 (online article from Guns Magazine).
4
Id., Exhibit 18 (article titled The Guns. Walther PPK, noting “the PPK will forever remain an icon in Bond
tradition”).
5
Id., Exhibit 4 (Wikipedia article noting “The PPK pistol is the trademark gun of fictional secret agent James
Bond.”).
6
Id. (screenshot of website titled Walther Pistols (with no affiliation to Applicant) noting “the elegant lines
of the legendary Walther PPK have caught the imagination of the entire world for over 75 years”).
7
Id., Exhibit 12 (an advertisement for a PPK replica-product airgun by Crossman)
8
Id., Exhibit 23 (www.mi6.xo.uk website describing the PPK as “Bond’s classic gun”).
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facie evidentiary burden to prove the acquired distinctiveness of its PPK Design. In light of the

overwhelming evidence presented, including unrebutted direct consumer evidence and testimony,

Applicant respectfully submits that its PPK Design should be approved for publication.

II. PROCEDURAL AND FACTUAL BACKGROUND

Applicant is the owner of Application Serial No. 77/096,523 for its distinctive PPK Design

mark depicted below for “firearms; pistols; air pistols; and air soft guns” (the “Application”):

The following description of the mark has been accepted of record:

The mark consists of the three-dimensional configuration of a pistol. The mark

includes 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. The mark includes the lines and ridges along
both sides of the slide, barrel, and frame indicating groves and ridges on the
surface of the pistol; the vertical and angular lines on the rear of the slide
indicating ridges on the surface of the pistol; the pattern on the hand grip; the
shape and location of the magazine release lever; the shape and appearance of the
trigger guard; the exterior shapes and designs on the hand grip or other portions of
the pistol and the placement or position of those shapes; the shape and proportion
of the barrel, and the shape, proportion, and position of the accessory rail. The
dotted lines indicate features that are not claimed as a part of the mark including:
the shape of the front sight and rear sight; and the shape of the trigger.

The record before the Board in this matter is extensive and reflects three separate Office

Actions issued by the Examining Attorney over the course of two years and numerous exhibits.

On April 13, 2007, the Examining Attorney issued the first Office Action, deferring review

on the merits and requiring a new drawing. On October 3, 2007, Applicant filed a Response to the

Office Action and also submitted a Petition to the Commissioner requesting waiver of the single

drawing rule. The Commissioner granted Applicant’s Petition on December 31, 2007.

On July 19, 2008, the Examining Attorney issued a second Office Action addressing the

merits of the application and refusing registration of the PPK Design as (1) merely functional, and
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(2) consisting of a non-distinctive product design not registrable on the Principal Register without

proof of acquired distinctiveness, inviting Applicant to submit evidence of acquired

distinctiveness.

Applicant filed its Response to the second Office Action on January 20, 2009, claiming

acquired distinctiveness and arguing against the functionality refusal. In support of its claim of

acquired distinctiveness, Applicant submitted substantial evidence and arguments to show that

Applicant’s PPK Design serves as a source indicator for Applicant’s goods, including the

Declaration of Wulf-Heinz Pflaumer and exhibits, evidence of Applicant’s long and substantially

exclusive use of its PPK Design, evidence of Applicant’s extensive marketing, advertising and

promotional efforts regarding the PPK Design, and evidence of the wild popularity and cult status

the PPK Design has achieved during more than forty years of unsolicited media coverage.

The Examining Attorney issued a Final Office Action on February 18, 2009, withdrawing

the functionality refusal, but affirming the nondistinctive configuration of goods refusal. In this

Office Action, the Examining Attorney submitted evidence in the form of Internet images of other

handguns and asserted Applicant’s product configuration is “a common one.” In the Final Office

Action, as well as in a follow-up telephone conference, the Examining Attorney suggested that

direct evidence would be helpful to prove relevant consumers viewed the PPK Design as a

trademark and not merely as a popular handgun.

Applicant commissioned an online survey and sought declarations from relevant

individuals in the firearms industry. On August 6, 2009, Applicant filed a Request for

Reconsideration and a Notice of Appeal, which included survey evidence wherein 54% of

respondents believe the PPK Design comes from a single source, as well as three additional

Declarations from: (1) Justin Biddle, Sales Manager for the U.S. distributor; (2) Steve Fjestad,

author and publisher of Blue Book of Gun Values; and (3) Jan Mlapek, Director of Marketing for

Smith & Wesson, directly addressing the Examining Attorney’s concern that consumers do not

view the PPK Design as a source identifier.

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 Despite the extensive evidence, arguments and case law submitted by Applicant, the

Examining Attorney denied Applicant’s Request for Reconsideration on August 13, 2009.

Applicant respectfully contends the record overwhelmingly demonstrates a prima facie showing of

acquired distinctiveness, and the Examining Attorney’s evidence of third-party handgun designs

fails to prove Applicant’s PPK Design is a common one or rebut Applicant’s substantial evidence.

III. FACTS AND EVIDENCE OF RECORD

Applicant has been manufacturing and selling firearms for over 120 years. See January

20, 2009 Response to Office Action (“Jan. 20 Response”), Ex. 31: Declaration of Wulf-Heinz

Pflaumer (“Pflaumer Decl.”) at ¶ 2. The “famous Walther PP pistol” was developed in 1929 and

has been used throughout the world since its introduction. Id. The Walther PPK came on the

market two years later, in 1931, as a slightly compact version of the PP. Id. The PPK was first

introduced in the United States in 1968 and has been sold in the United States, through various

distributors, since that time. Id., at ¶ 3; see also Jan. 20 Response, Exhibit 4. The PPK Design has

been in use in the U.S. for more than 40 years, eight times as long as the statutory five year period

required to create a presumption of distinctiveness.

Applicant’s advertising expenditures over a four year period for its handguns alone,

including the PPK Design, were close to one million dollars. See Jan. 20 Response, Exhibit 7.

Applicant has prominently displayed and featured the PPK Design as the focal point and

discussion piece in advertising and marketing materials, the covers of its catalogs, promotional

materials at industry shows and in industry specific magazines and publications. Id., Exhibits 6-

10.

Due to the popularity of Applicant’s PPK Design, Applicant expanded its product

offerings under the Design Mark to include replicas such as a gas signal gun, air guns, CO2 pistols

and paint guns. Pflaumer Decl., ¶ 6. The “replica” market is somewhat unique to handguns in that

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it allows consumers to purchase non-lethal products which retain the “look and feel”9 of the

originals. The manufacturers and distributors of replica products license the most popular gun

configurations.10 The Walther “replicas” market expanded quickly and is heavily advertised by

Applicant and its licensees in its catalogs, in magazines, and through online retailers. Id., ¶¶ 6 and

8. Applicant has significantly increased its advertising budget for the licensed items (to include

numerous, well-known magazines, catalogs and shooting stores) and today, more than two million

licensed articles are sold worldwide by Applicant, many of those based upon the PPK Design. Id.,

¶ 9.; see also Jan. 20 Response, Exhibit 13.

Applicant’s PPK Design has enjoyed unprecedented exposure from the James Bond books

and movies for over forty years, as well as other wildly popular movies (discussed in detail on

page 6 below). See Jan. 20 Response, Exhibits 20 – 25. With each Bond movie came extensive

promotional materials depicting Bond with his PPK, increasing the notoriety and fame of the PPK

Design. Id., Exhibit 22. Importantly, the gun is not verbally identified in most of the movies and,

in the movie posters and promotional materials, the PPK Design is prominent, while no word mark

is readily identifiable.

As noted, Applicant’s evidence of record is extensive and includes the following:

1. Applicant’s October 3, 2007 Response to Office Action.

2. Applicant’s January 20, 2009 Response to Office Action.

3. Exhibits 1 – 31 to the January 20, 2009 Response, including:

‚ Declaration of Wulf-Heinz Pflaumer, Exhibit 31;

‚ Four USPTO trademark registrations for handgun configurations,

Registration Nos. 2,731,436; 2,939,065; 2,807,747; and 2,807,745, Exhibit
1;

‚ Printouts of statements from various Internet blogs where the individuals

recognized the PPK Design based solely upon a glimpse of the gun in

9
See e.g., Jan. 20 Response, Ex. 12 (replica advertisements for the Walther products noting “same size,
shape and feel” as the original).
10
See Aug. 6, 2009 Response, Ex. 6: Biddle Decl., ¶10, noting Umarex USA (manufacturer and distributor
of numerous lines of replicas) decides which product configurations to license and replicate based, in part,
upon the success and notoriety of the configuration.
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 recent movies (Quantum of Solace and Valkyrie) where there was no
verbal identification of the PPK in the movie, Exhibit 2;

‚ Documentary evidence as to long history of use in the United States,

Exhibits 3 and 4;

‚ Printouts of statements from various Internet webpages discussing the

fame of the PPK, Exhibits 5 and 18;

‚ Examples of numerous advertisements, promotional and marketing

materials, many of which prominently display the PPK Design as the focal
point, and including numerous industry magazines, websites and trade
publications, Exhibits 6 – 10;

‚ Evidence of advertising expenditures, Exhibit 7;

‚ Evidence of Applicant’s expansion of products under the PPK Design to

include replicas and success of the replica items, Exhibits 11-13;

‚ Evidence of use on promotional products such as pins, coffee cups,

playing cards and on commemorative versions of the handgun and items
outside the handgun industry, Exhibits 14-16;

‚ Substantial evidence of unsolicited media coverage from James Bond

books and films, unofficial web pages, fan pages, blogs, Bond-related
replicas, and other, wildly popular movies, television shows and video
games, Exhibits 17-26; and

‚ A Google images search of “Bond gun,” Exhibit 30.

4. Applicant’s August 6, 2009 Request for Reconsideration.

‚ Exhibits to Applicant’s August 6, 2009 Request, including:

‚ Additional website evidence identifying the Walther PPK by image from

various movies as well as evidence as to the substantial sales of some of
the movies featuring the PPK Design, Exhibits 1 and 2;

‚ Images of other guns with grip, trigger, barrel and sight, Exhibit 3;

‚ Results of survey conducted of relevant consumers (handgun owners and

potential handgun owners) wherein 54% of respondents believe the PPK
Design comes from a single source, Exhibit 4 (Declaration of Riva Kupritz
(“Kupritz Decl.”), Principal of Outsource Marketing who conducted the
survey), and Exhibits A – E including underlying raw data and documents;

‚ Evidence that numerous survey respondents tied the shape of the PPK to
James Bond, Exhibit D to Kupritz Decl.;

‚ Declaration of Karen Brennan (“Brennan Decl.”), detailing calculations of

the survey data, Exhibit 5;

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 ‚ Declaration of Justin Biddle (“Biddle Decl.”), Sales Manager for Umarex
USA (distributor of replica products based upon Applicant’s PPK Design),
Exhibit 6;

‚ Declaration of Steve Fjestad (“Fjestad Decl.”), the Author and Publisher

of Blue Book of Gun Values for the past 20 years, Exhibit 7 (including
Exhibit B, Google Images search for “Bond gun”); and

‚ Declaration of Jan Mlapek (“Mlapek Decl.”), Director of Marketing for

Smith & Wesson, exclusive manufacturer/distributor of PPK in the U.S,
Exhibit 8.

IV. ISSUE ON APPEAL

Whether Applicant’s record evidence constitutes a prima facie showing of acquired

distinctiveness of the PPK Design for registration on the Principal Register.

V. ARGUMENT

Section 2(f) of the Lanham Act provides that “nothing in this chapter shall prevent the

registration of a mark used by the applicant which has become distinctive of applicant’s goods in

commerce.” 15 U.S.C. § 1052(f). “An applicant need not conclusively establish distinctiveness but

need only establish a prima facie case.” In re Capital Formation Counselors, Inc., 219 U.S.P.Q.

916 (TTAB 1983) citing In re Industrial Washing Machine Corp., 201 USPQ 953, 956 (TTAB

1979) (emphasis added).

To establish acquired distinctiveness, an applicant may put forth numerous types of

evidence including length and exclusivity of use by the Applicant, sales and marketing figures,

advertising and promotional materials, declarations, and evidence of unsolicited media coverage.

See In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005). The statute is virtually silent

with respect to the amount and character of the evidence required to establish that a mark is

registrable under Section 2(f). “Congress has chosen to leave the exact degree of proof necessary

to qualify a mark for registration to the judgment of the Patent Office and the courts.” In re Hehr

Mfg. Co., 126 USPQ 381, 383 (CCPA 1960). There is no set amount of proof necessary to

demonstrate acquired distinctiveness. In re Black & Decker Corp., 81 USPQ2d 1841, 1842

(TTAB 2006). Given the numerous types of evidence that may be persuasive as proof of acquired

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distinctiveness in any given case, courts have consistently held that determinations as to acquired

distinctiveness must be made based upon a totality of the evidence and excessive weight should not

be given to any one factor. In re Owens-Corning Fiberglass Corporation, 227 USPQ 417, 422

(Fed. Cir. 1985); In re Black & Decker Corp., 81 USPQ2d at 1845.

A. Contrary to the Examining Attorney’s Contentions, Applicant Has Submitted

Extensive Evidence of Advertising and Promotional Efforts Stressing the PPK
Design in a Trademark Sense

Applicant has submitted substantial direct and circumstantial evidence as to the acquired

distinctiveness of its PPK Design, complying with both In re Steelbuilding.com factors and the

Examining Attorney’s specific recommendations. While the Examining Attorney acknowledges

the extensive evidence of record, he continues to refuse registration based on his belief that

Applicant does not “promote the configuration of the goods as a mark.” See Denial of Request for

Reconsideration. Putting aside this inappropriate single-factor focus, Applicant has, in fact,

submitted substantial evidence that it promotes its PPK Design as a trademark, as well as evidence

as to the success of its promotion of the PPK Design as a trademark (coming from a single source).

First, Applicant has submitted evidence that it promotes the PPK Design as a mark,

including numerous examples of advertising and promotional pieces displaying the mark as the

focal point and including text emphasizing the design by noting the “sleek and elegant lines,”

“unique” design, and “elegant craftsmanship.” By way of example:

‚ Promotional campaign: “A Reputation Neither Shaken Nor Stirred” with a large image
of the PPK, and text stating “No other pistol has quite the reputation that a Walther
PPK pistol does. Its sleek, elegant lines have excited shooters from the moment it was
created almost 75 years ago…unique, sleek and elegant.” See Jan. 20 Response,
Exhibit 8, pgs. 4-5; Exhibit 9, pgs. 7-8; Exhibit 10, pgs. 3, 4 and 6.

‚ “Very seldom are important achievements labeled legendary….There is not a weapons

fan in the world who does not know the Walther PPK. The weapon, designed in 1931,
is admired for it elegant lines. The fact that this one was also chose as “his” service
pistol by an agent in her Majesty’s secret service underlines the outstanding
importance of the Walther PPK in the history of weapons.” Id., Exhibit 10.

‚ “Elegant craftsmanship…Ian Fleming’s superspy James Bond made Walther a

household name in the USA. The Walther Model PPK was Agent 007’s preferred
personal protection sidearm, its sleek silhouette instantly recognizable in a dozen

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 Hollywood films…classic styling of the Walther PPK establish it as a firearm classic.”
Id., Exhibit 10, pgs. 7-8.

‚ “Some of the most famous pistol shapes can be found in Walther’s Special Operations
line of air soft guns.” Biddle Decl., Exhibit C (advertisement for airgun).

‚ “After 75 years, the pistol that helped make James Bond famous will be recognized
with a special commemorative model…the frame designed to provide a streamlined
look and feel.” Jan. 20 Response, Exhibit 15, pg. 2 (Press Release for SHOT Show).

Each of the above identified advertisements/promotional pieces have been widely used by

Applicant in industry magazines, retail websites, industry publications such as the SHOT Show

magazine, and in promotional materials. Each example emphasizes the PPK Design as the focal

point of the advertisement and comments specifically on the external design. Applicant’s

promotional efforts need not contain the specific terms “look for” to be effective in promoting the

PPK Design as a trademark. The key is not whether the advertisement includes the terms “look

for,” but rather whether the advertisements “stress the product configuration in a trademark sense.”

In re Enco Display Systems, 56 U.S.P.Q.2d 1279, 1285 (TTAB 2000) (“[S]everal courts have held

that advertisements which stress the product configuration in a trademark sense is the most

significant evidence of acquired distinctiveness.”) (emphasis added); see also In re Days-Ease

Home Products Corp., 197 USPQ 566, 568 (TTAB 1977) (“Moreover, applicant, as evidenced by

its advertising material made of record, has made an effort to thrust the container to the fore of this

material so as to project a commercial image that will remain with the consumer in his purchasing

excursion, separate and apart from the word mark”) (finding a product container inherently

distinctive); Seabrook Foods Inc. v. Bar-Well Foods, Ltd., 196 USPQ 289, 191 n.8 (CCPA 1977)

(discusses the importance of “advertising emphasizing design portion of the mark to potential

consumers”).

Further, “image advertising” alone, is also probative of acquired distinctiveness. L.A.

Gear, Inc. v. Thom McAn Shoe Co., 12 USPQ2d 1001 (SDNY 1989), rev’d on other grounds, 25

USPQ2d 1913 (Fed. Cir. 1993) (finding trade dress in a design on athletic shoes had acquired

secondary meaning, relying in part on advertising that featured the trade dress in “image

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advertising;” “In order for advertising to be a probative indication of secondary meaning, the

advertising must feature the trade dress in some way.”); In re The Black & Decker Corporation, 81

USQP2d 1841, 1844 (TTAB 2006) (emphasis added) (no “look for” advertising was used, but the

Board considered that applicant “prominently displayed in several of its advertising and

promotional materials” the keyhead design); see also See Yamaha Int’l Corp v. Hoshino Gakki Co.,

231 USPQ 926 (TTAB 1986), aff’d 840 F.2d 1572 (Fed. Cir. 1998) (holding guitar head shapes

were valid trademarks for guitars even in the absence of efforts to explicitly stress and promote the

head designs as trademarks). Applicant has submitted numerous examples of the prominent

display and emphasis upon the PPK Design in its advertising and promotional materials, such as

consistent use on the cover of its catalogs. See Jan. 20 Response, Exhibit 6.

Finally, the Examining Attorney focuses only upon Applicant’s actions, but fails to

consider whether the record proves consumers do, in fact, view, or are likely to view, Applicant’s

PPK Design as a trademark. See Seabrook Foods, Inc., 196 USPQ at 291 (noting evidence of

advertisement “emphasizing the design portion of the mark to potential consumers” should be

“coupled with a showing that such advertising has consumer impact.”); In re Enco Display

Systems, 56 U.S.P.Q.2d 1279, 1285 (TTAB 2000) (“[T]he critical question is the effectiveness of

the advertisements in creating a consumer association between the product configuration and the

producer…”). In fact, the record overwhelmingly proves that Applicant’s promotion has had

consumer impact. By way of brief example:

1. Survey: 54% of relevant consumers identified the PPK Design as coming from a

single source. Some specific comments from survey participants (as to why they believe the PPK

comes from a single source) include:

‚ “It’s an iconic shape;” “the PPK PPK/S is very distinctive;” “it is a classic shape;”
“the shape of the PPK is unique;” “Are you kidding? Classic ‘James Bond’ style;”
“James Bond made the Walther PPK famous;” “It’s the James Bond Pistol;” and
many more. See Aug. 6 Response, Kupritz Decl., Ex. D (raw data).

2. Experts in the Field:

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 ‚ Steve Fjestad, author and publisher of the Blue Book of Gun Values for the last 25
years: “I would consider the gun configuration to be an iconic trademark.”
Fjestad Decl. at ¶9.

‚ “There are certain handgun configurations that are more recognizable and stand
out as trademarks from the crowded field of handguns in the market. One of the
most recognizable handgun configurations among handgun consumers is the
Walther PPK.” Id., at ¶4.

‚ “In my opinion, a silhouette or outline of a Walther PPK pistol is both a distinctive

and recognizable trademark…” Id. at ¶ 5.

‚ Justin Biddle, Marketing Manager for Umarex USA: “Umarex USA believes and
conveys to consumers that the Walther PPK gun configuration ranks among the
most well known and famous gun configurations in the United States.” Biddle
Decl., at ¶10.

‚ Jan Mladek, Marketing Director for Smith & Wesson: “In my opinion, the PPK
configuration is distinctive to handgun consumers. The overall lines and profile of
the PPK are recognizable as a trademark. It is a classic, if not iconic, handgun
configuration and trademark.” Mladek Decl. at ¶5.

3. Online Blogs (identifying PPK solely from movie clips; no verbal identification):

‚ “I was checking out some pictures of the filming in Italy over at mi6.co.uk and am
thinking that’s a PPK in Craig’s hand. The rumor mill was churning out reports
Bond would be going back to the PPK for Casino Royale, but I thought they were
rubbish. Any thoughts?” Responses included: “Certainly looks very much like a
PPK;” “Saw a magazine article today with a close up of DC [Daniel Craig] and he
is defo [definitely] pointing a PPK at somebody.” See Jan. 20 Response, Exhibit
2, Mania Blogs Forum.

‚ “[A]bout the pistol in the trailer. What type of pistol does he rack by catching the
front sight on this desk? It looks like a Walther PPK.” Id., Gunboards.com
Valkyrie Forum.

‚ “Has anyone seen the trailer for the movie Valkyrie? They show a pistol being
racked by pushing it against a desk or table. Does anyone know what pistol that
was…?” Five separate bloggers identified it as “looking like” a Walther PP or
PPK. Id., Sigforum Blog.

‚ “The movie preview for Valkyrie is out and in it a beautiful couple second close-
up of how to rack the slide of a PPK one handed with your support hand. Its
educational.” “That scene jumped out of the trailer at me too. We have James
Bond back carrying a PPK in Quantum of Solace and now this too! Two PPK
films in one year…” Id., Walther Forums Blog (not affiliated with Applicant).

‚ “I thought it was a good movie. Other than high Nazi officials using PPK’s and
not Lugers…” Id., History Channel Blog (regarding Valkyrie).

4. Other Blogs and Online Articles (discussing the PPK Design):

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 ‚ “The elegant lines of the legendary Walther PPK have caught the imagination of
the entire world for over 75 years.” Jan. 20 Response, Exhibit 18
(www.waltherpistols.com; not affiliated with Applicant).

‚ “Walther’s PPK is undeniably one of the world’s most recognizable handguns.”

Id., Exhibit 5, online Guns Magazine article.

Finally, the Examiner’s repeated emphasis on a single factor as determinative is improper.

In denying Applicant’s Request for Reconsideration, the Examining Attorney considered

Applicant’s survey evidence and acknowledged:

“The configuration that the applicant seeks to register is recognized by a certain

segment of the population, i.e., gun owners and gun enthusiasts.11 However, the
survey evidence submitted does not show that the applicant, in any way, promotes
the configuration of the goods as a mark.”

See Denial of Request for Reconsideration (emphasis added).

Applicant’s legal burden is to present a prima facie case that relevant consumers view the

PPK Design as coming from a single source. TMEP §1212.06(b) (the “ultimate test in determining

acquisition of distinctiveness under Trademark Act Section 2(f) is not applicant’s efforts, but

applicant’s success in educating the public to associate the claimed mark with a single source.”).

Applicant has more than met its burden of presenting prima facie evidence as to the single source

significance of its PPK Design, including survey evidence indicating over half of the relevant

consumers believe the PPK Design comes from a single source. See TMEP §1212.06(d) (To show

acquired distinctiveness, “the survey must show the public views the proposed mark as an

indication of the source of the product or service.”). The Examining Attorney has not presented

any evidence to dispute these findings, but rather improperly relies too heavily on a single factor in

making a determination of acquired distinctiveness. See In re Owens-Corning Fiberglass

Corporation, 227 USPQ 417, 422 (Fed. Cir. 1985) (totality of the evidence; excessive weight

should not be given to any single factor). Thus, the Examining Attorney’s determinative focus on

Applicant’s actions and dismissal of Applicant’s survey evidence for the reason that it did not

prove “applicant promoted its mark as a trademark” is misplaced.

11
Applicant identified the relevant consumers for its survey as individuals who owned a handgun or were
considering purchasing a handgun (individuals who have or may purchase the goods at issue).
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 B. Applicant Has Presented Prima Facie Evidence of Acquired Distinctiveness

Factors in determining acquired distinctiveness include: (1) length and exclusivity of use

by the Applicant of the mark in the United States; (2) the type, expense and amount of advertising

of the mark by applicant in the United States; and (3) additional evidence such as unsolicited

media coverage in the United States. In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir.

2005). As noted above, it is well established that “an applicant need not conclusively establish

distinctiveness but need only establish a prima facie case to warrant publication of a mark for

opposition.” In re Capital Formation Counselors, Inc., 219 USPQ at 919 quoted with approval,

Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1576 (Fed. Cir. 1988).

The Board has explicitly recognized that the external design of a gun is eligible for

registration upon a showing of acquired distinctiveness. See In re Browning, 217 U.S.P.Q. 933

(TTAB 1982); Ruger & Co., Inc. v. Arcadia Machine & Tool Inc., 10 USPQ2d 1522, 1528 (C.D.

Cal. 1988); see also Jan. 20 Response, Exhibit 1, Registration Nos. 2,731,436; 2,939,065;

2,807,747 and 2,807,745.

1. Direct Evidence of Acquired Distinctiveness

To establish acquired distinctiveness, an applicant must prove the trademark significance

of the design through direct and/or circumstantial evidence. See In re Ennco Display Systems, Inc.,

56 USPQ2d 1279 (TTAB 2000). Direct evidence means the actual testimony of actual or

prospective customers as to their state of mind and may consist of either testimony by random

consumers or by ‘quasi-direct’ evidence in the form of a survey. MCCARTHY ON TRADEMARKS §

15:39 (2008). While direct evidence is “not a requirement and secondary meaning can, and most

often is, proven by circumstantial evidence” (Id.), Applicant has submitted substantial direct

evidence in support of its claim for acquired distinctiveness, including survey evidence, three

declarations from reputable individuals in the industry, and numerous blog and online quotes from

relevant consumers. In fact, the only direct evidence in the record as to how consumers view the

- 14 -
PPK Design comes from the Applicant and directly rebuts the Examining Attorney’s contention

that the PPK Design is a “common one.”

a. Survey

Applicant commissioned an online survey of relevant consumers. See Aug. 6, 2009,

Request for Reconsideration (“Aug. 6 Response”) (includes description of the survey); see also

Kupritz Decl. (Ex. 4) and attached Exhibits A-E (underlying survey data and documents), as well

as Brennan Decl. (Ex. 5), detailing calculation of the results. The objective of the survey was to

determine the extent to which consumers view certain pistol designs (four total), including

Applicant’s “unbranded” PPK pistol configuration, as coming from a single source.12 The relevant

population for the survey was defined as individuals who own a handgun or who were considering

purchasing a handgun in the near future. Standard survey procedures were followed, including a

large sampling size (over 400 respondents), randomization of the image order by the party

conducting the survey, verification questions to limit the respondents to the relevant population,

and framing the questions as “unaided awareness” or open-ended questions; no leading questions

were used. Kupritz Decl., ¶¶ 10-11, 18; Exhibits A-E.

Applicant’s PPK pistol configuration was found to come from a single source by 54% of

the participants, over half of those surveyed and definitive proof of secondary meaning. See

Spraying Systems Co. v. Delavan, Inc., 975 F.2d 387, 24 USPQ 1181, 1187 (7th Cir. 1992) (notes

“a 50-percent figure is regarded as clearly sufficient to establish secondary meaning”). Indeed,

survey results in other cases showing association below levels of 50% have been held to establish

secondary meaning. See Thomas & Betts Corp. v. Panduit Corp. 138 F.3d 277, 295 (7th Cir. 1998)

(holding secondary meaning levels as low as 30% entitled to weight); Zatarains, Inc. v. Oak Grove

Smokehouse, Inc., 698 F.2d 786, 796 (5th Cir. 1983) (upholding district court finding as to

12
It is not necessary for Applicant to establish consumers can name it as the source of the goods being sold
under Applicant’s claimed configuration mark because the actual source can be unknown to consumers and
still be distinctive. See Two Pesos, Inc. v. Taco Cabana, Inc., 112 S. Ct. 2753, 2757, 23 USPQ2d 1081
(1992); Stuart Hall Co. Inc. v. Ampad Corp., 34 USPQ2d 1428, 1434 (8th Cir. 1995); J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:8 (2008).
- 15 -
sufficiency of secondary meaning levels of 23% and 28%). Accordingly, the association level of

54% established by the survey should be entitled great weight.

The correct consideration for an acquired distinctiveness survey is whether consumers

believe the product configuration comes from a single source, regardless of whether the consumers

know the actual source by name. However, even if the consideration were based upon a consumer

identifying the correct single source, the survey results still support Applicant’s claim of acquired

distinctiveness for its PPK Design, as 33% of the participants correctly identified Walther (or

Smith & Wesson13) as the single source of the PPK pistol configuration.14 See e.g., Thomas &

Betts Corp. v. Panduit Corp., 138 F.3d at 295 (30% entitled to weight); Zatarains, Inc. v. Oak

Grove Smokehouse, Inc., 698 F.2d at 796 (23 and 28% sufficient for secondary meaning); see also

Monsieur Henri Wines v. Duran, 204 U.S.P.Q. 601, 205 (T.T.A.B. 1979) (37% of interviewees

associated opposer’s brand with a background design); McNeil-PPC v. Granutec, Inc., 37

U.S.P.Q.2d 1713 (E.D.N.C. 1995) (survey evidence accepted as probative of secondary meaning

wherein 41% associated red and yellow capsules with a single brand and 38% identified that brand

as TYLENOL).

The survey results prove that a majority of relevant consumers view the PPK Design as an

indicator of source. The survey evidence also proves the Applicant’s PPK Design is not

considered “a common one” by the relevant consumer as he or she connects the configuration with

a single source and many are even able to name Applicant as the correct single source.

b. Declarations

Applicant also submitted three declarations from industry individuals in support of its

claim of acquired distinctiveness wherein each declared under penalty of perjury that the PPK

Design is unique and recognized as a trademark, including the following individuals:

‚ Justin Biddle, the Marketing Manager for Umarex USA. Mr. Biddle
testified that Umarex USA believes and conveys to consumers that the
Walther PPK gun configuration ranks among the most well known and

13
Smith & Wesson is the sole manufacturer and distributor of the PPK for Applicant in the United States.
14
Brennan Decl., ¶ 15.
- 16 -
 famous gun configurations in the United States (Aug. 6 Response, Ex. 6:
Biddle Decl. at ¶10) and Walther PPK product configuration has been a
very successful design for replicas, selling over 25,000 PPK replica
products totaling sales of over $900,000 in the last three years (2006 –
2008). Id.

‚ Steve Fjestad, the Author and Publisher of Blue Book of Gun Values for
the last 20 years. Mr. Fjestad testified that “one of the most recognizable
handgun configurations among handgun consumers is the Walther PPK.”
(Id., Ex. 7: Fjestad Decl. at ¶4). “Based upon my experience, information,
and belief, a consumer viewing the PPK in the marketplace would see the
shape of the gun as an indicator of source.” Id., at ¶6. “In fact, in my
opinion, even individuals who are not handgun consumers but are fans of
the James Bond films would likely be able to identify the silhouette of the
PPK (without identifiable word markings) as the ‘James Bond’ gun.
While these fans may not know the manufacturer by name, identifying the
shape as the Bond gun tells me they believe the configuration to come
from a single, consistent source.” Id., at ¶7. “I would consider the gun
configuration to be an iconic trademark.” Id., at ¶9.

‚ Jan Mladek, the Marketing Director for Smith & Wesson, the exclusive
manufacturer and distributor of the Walther PPK in the United States. Mr.
Mladek testified: “In my opinion, the PPK configuration is distinctive to
handgun consumers. The overall lines and profile of the PPK are
recognizable as a trademark. It is a classic, if not iconic, handgun
configuration and trademark.” (Aug. 6 Response, Ex. 8: Mladek Decl., at
¶5); “To play off of the popularity and longevity of the unique and
distinctive PPK configuration, Smith & Wesson discusses its distinctive
style on the Walther America website as follows: Often imitated but never
duplicated. The elegant lines of the legendary Walther PPK have caught
the imagination of the entire world for over 75 years. Developed in 1931,
the Walther PPK continues to thrill the shooting public, and the legend
lives on.” Id. at ¶7.

c. Direct Consumer Quotes from Blogs and Websites

Applicant has submitted several statements serving as direct evidence from various Internet

blogs in which individuals recognize the PPK Design based solely upon a glimpse of the gun in the

recent films Quantum of Solace and Casino Royal (James Bond) and Valkyrie (without verbal

identification or visible word marks). See supra, pages 14-15; Jan. 20 Response, Exhibit 2. These

direct consumer statements also prove that the PPK Design is recognized and serves as a

trademark.

2. Circumstantial Evidence of Acquired Distinctiveness

- 17 -
 In addition to the direct evidence above and in support of each of the In re

Steelbuilding.com factors, Applicant has submitted extensive circumstantial evidence of acquired

distinctiveness.

a. Applicant Has Had Substantially Exclusive and Continuous

Use of the PPK Design in the United States for over 40 Years

Applicant first introduced the PPK in the United States in 1968. It has been sold, through

various distributors, since that time (more than 40 years). Pflaumer Decl., ¶ 3. Applicant has used

its PPK Design mark for longer than other applicants who successfully registered their design

marks under Section 2(f). For example, the Glock handgun configuration, subject of Reg. No.

2,807,747, had been used in commerce for only nine years when it first was registered. Jan. 20,

Response, Exhibit 1. Other examples include In re Mine Safety Appliances Company, 66 USPQ2d

1694 (TTAB 2002) (six years of substantially exclusive use), and Yamaha International Corp. v.

Hoshino Gakki Co., 6 USPQ2d 1001, 1010 (Fed. Cir. 1988) (eight years).

b. Advertising Efforts for the PPK Have Been Substantial

In just four years, 2004-2007, more than $920,000 was spent in advertising Applicant’s

handguns alone, including the PPK Design, in a variety of media resources, including popular

industry magazines, websites, third-party retailers (catalogs and websites) and at popular industry

trade shows. Pflaumer Decl., ¶ 5, Exhibits 6-9. This example of Applicant’s significant

advertising and promotional expenditures over recent years is more than adequate to demonstrate

the Design Mark’s distinctiveness, particularly given the fact that Applicant and its distributors

have continuously advertised the PPK for over forty years, since its introduction in 1968 and these

figures do not include advertisement of licensed items such as air guns, CO2 guns and paint guns

(discussed below). See In re Data Packaging Corp., 453 F.2d 1300, 1304 (CCPA 1972)

(expenditures of $30,000 probative of secondary meaning); see also In re Raytheon Co., 202

USPQ 317, 319 (TTAB 1979) ($100,000 in advertising probative of secondary meaning).

The Examining Attorney acknowledges Applicant’s “significant advertising expenditures

for the goods at issue” but notes “such evidence is not dispositive of whether the proposed mark

- 18 -
has acquired distinctiveness.” See Denial of Request for Reconsideration. Applicant clearly has

not attempted to rely on its advertising expenditures alone, given the other direct and

circumstantial evidence submitted. Rather, Applicant’s high advertising expenditures are one of

many ways it has established acquired distinctiveness in the PPK Design. Finally, as discussed

above, Applicant prominently displays, promotes, discusses, and directs consumer attention to the

PPK Design in its advertising and promotional materials. See supra pages 12-13; see also Jan. 20

Response, Exhibits 6-10.

c. Expansion of Product Offerings under the Design Mark

Additional evidence of the PPK Design’s acquired distinctiveness includes Applicant’s

expansion of the PPK Design into products other than firearms. See e.g. Dallas Cowboys

Cheerleaders, Inc. v. Pussycat Cinema, Ltd. 201 USPQ 740 (SDNY 1979) (established secondary

meaning in Dallas Cowboy’s Cheerleader uniform, in part, through evidence of licensing the

uniform in connection with products such as posters, playing cards, calendars and t-shirts). In

1978, Applicant granted a license for a gas signal gun based upon the “world famous” PPK to

Umarex, establishing a “new, profitable replicas market segment.” Jan. 20 Response, Exhibit 11;

see also Pflaumer Decl., ¶ 6. In the late 1990’s, Applicant expanded its licenses, including the

PPK Design, into air guns, CO2 pistols, and paint guns in the United States. Pflaumer Decl., ¶ 6.

The “replicas” market expanded quickly and is heavily advertised by Applicant and its licensees in

its catalogs, in magazines, and through online retailers. Id., at ¶¶ 6 and 8; see also Jan. 20

Response, Exhibit 12. Applicant has significantly increased its advertising budget for the licensed

items (to include numerous, well-known magazines, catalogs and shooting stores) and today, more

than two million licensed articles are sold worldwide by Applicant, many of those based upon the

PPK Design. Pflaumer Decl., ¶ 9.; Jan. 20 Response, Exhibit 13.

Applicant has further promoted the distinctive PPK Design by using it as a trademark on

promotional products including pins, coffee cups, and playing cards, in which the word marks are

- 19 -
either not used or are barely visible. Jan. 20 Response, Exhibit 14. Applicant has also created

commemorative versions of the PPK, such as the PPK 75th Anniversary Edition. Id., Exhibit 15.

d. Unsolicited Media Coverage and other Source-Identifying

Evidence

The Walther PPK has received extensive, unsolicited third party media coverage where the

design is prominently featured (discussed in detail below). This evidence is highly probative of the

acquired distinctiveness of Applicant’s PPK Design. See Mortality v. Nino of Cal., Inc., 335 F.

Supp. 1288 (S.D.N.Y. 1972) (finding extensive third-party publicity probative of secondary

meaning); see also In re NSM Ctr., Inc., 228 USPQ 974, 975 (TTAB 1986). Unsolicited third

party coverage of the PPK Design has included Internet coverage (blogs, forums and fan sites),

James Bond books and movies, promotional items for movies, other wildly popular movies and

films, television shows and video games. In fact, this type of unsolicited media coverage has been

found indicative of fame of a mark. See e.g., Starbucks v. Ruben, 78 USPQ2d 1741 (TTAB 2006).

In Starbucks, the Board relied heavily on the evidence of unsolicited media coverage including

being featured in numerous television programs and press articles which “resulted in extensive

recognition and renown of the STARBUCKS mark among the general public.” Id.; see also Bose

Corp v. QSC Audio Products Inc.., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002) (extensive media

coverage indicative of fame).

The PPK Design is highly acclaimed and regularly discussed on Internet web sites by

pistol enthusiasts, including an unofficial website, a Walther Handgun Owners Group, and an

unsolicited blog at www.waltherforums.com, among others. Jan. 20 Response, Exhibits 5, 17 and

18. Some pertinent quotes from this unsolicited third party coverage include:

‚ “An aura seems to surround some guns, which often has little bearing on the
capabilities of the weapon itself…The Walther PPK was carried by no less a man than
James Bond. With such a sterling endorsement the gun could not help but become an
icon.” Exhibit 17.

‚ “[T]he PPK will forever remain an icon in Bond tradition along with the Aston Martin
and the Vodka Martini.” Exhibit 18 (The Guns Internet article).

- 20 -
 ‚ “The elegant lines of the legendary Walther PPK have caught the imagination of the
entire world for over 75 years.” Exhibit 18 (Walther Forums website).

‚ “Walther’s PPK is undeniably one of the world’s most recognizable handguns. Made
famous by Ian Fleming’s immortal secret agent, James Bond, the hand PPK has
become a tremendously popular sidearm…” Exhibit 5 (Gun Magazine online article).

‚ “This gun was used in the first 17 James Bond movies…the PPK was a cutting edge
weapon, with fairly sophisticated features, and a bit of an exotic feel, when compared
to the standard revolvers and army pistols floating around…The gun itself is very old
world and refined, much like the character who packed it.” Exhibit 18 (first Internet
article).

As noted above, the Walther PPK is synonymous with the PPK Design and James Bond as

it has been his gun of choice, displayed in the movies since the early 1960’s. In fact, Wikipedia

notes “The PPK pistol is the trademark gun of fictional secret agent James Bond in books and

films. The pistol is prominently featured in opening sequences and film art, hence it is culturally

popular.” Id., Exhibit 4, p. 2 (emphasis added); see also Exhibit 19 (“James Bond has done a lot to

make Walther famous over the last 40 years”); (“James Bond has made the Walther name a legend

in its own time. Since 1962 so far, millions of fans have marveled at “his” Walther pistols in all of

his spectacular films.”).

While Bond was initially famed through the best-selling books beginning in the late 1950’s

(and including reference to the Walther PPK), the character is best known from the EON

Production film series, twenty-one of which have been made as of 2007, and in most of which he

wields the Walther PPK (17 movies).15 Id., Exhibit 20. There is no question as to the popularity of

these movies which provided unprecedented media coverage to the PPK Design, as Bond is rarely

without his pistol. Importantly, the movies depict and promote the design of the gun, rather than

the name, as the audience is unable to see a word mark and Bond rarely, if ever, discusses the

brand of his gun. The inflation-adjusted total Box Office revenue from the first sixteen movies

featuring the PPK Design is close to $9 billion (roughly $8,942,000,000). Id., Exhibit 20, pgs. 4-5.

With each movie came extensive promotional materials depicting Bond with the PPK, increasing

15
In 1997, James Bond also began using the Walther P99 in the movies, the configuration which is the
subject of App. Nos. 77/054,752 and 77/054,750.
- 21 -
the fame of the PPK Design, including movie posters and promotional items where the PPK

Design is prominent, while no word mark is readily identifiable. Finally, along with the incredible

popularity of the Bond films came web sites devoted to Bond’s lifestyle such as Bond Lifestyle,

the Real Thing (www.jamesbondlifestyle.com), including a “Gadgets” page for the Walther PPK:

The Home of James Bond 007 (www.mi6.co.uk), discussing the Walther PPK in connection with

numerous movies (Id., Exhibit 23); the production of toy ‘replica’ guns based on the PPK Design

(Id., Exhibit 24); and books devoted to the Bond character, discussing the PPK (Id., Exhibit 25).

The consuming public identifies Applicant as the single source of the “Bond gun” based

upon the PPK Design. A search of “Bond gun” in Google Images immediately pulls up numerous

product images of the PPK Design,16 clearly linking the Bond character with PPK Design images

and Walther as the source of the product. Id., Jan. 20 Response, Exhibit 30; see also Aug. 6

Response, Ex. B to Fjestad Decl. These searches substantiate the above-referenced evidence

relating to the association created in the public’s mind between the PPK Design, as seen repeatedly

in the James Bond movies, posters and video games (most often without visible word marks), and

Applicant as the source of those goods. Furthermore, in the survey discussed above, after being

shown an image of the PPK configuration (without word marks) and asked whether it comes from

a single source, numerous respondents who correctly identified the single source as Walther, listed

the reason as the James Bond films, such as: “it’s the James Bond pistol;” “Are you kidding?

Classic ‘James Bond’ style!;” and “James Bond made the Walther PPK famous.” See Aug. 6

Response, pgs. 5-6 (citing Kupritz Decl., Exhibit D).

In addition to the James Bond books, movies, and promotional items, the PPK Design has

been featured in other popular movies including “Taxi Driver,” “The Departed,” “Die Hard with a

Vengeance,” “Bad Boys II,” “Lethal Weapon,” “Die Hard,” “Austin Powers: International Man of

Mystery,” “8mm,” “Face/Off,” and, most recently, “Valkyrie”; numerous television programs

16
The search pulls up both the Walther PPK and the Walther P99. As noted, the Walther PPK was Bond’s
gun of choice from 1962 through 1997. In or around 1997, he began using the Walther P99, the design
configuration that is the subject of Trademark Application Serial Nos. 77/054,750 and 77/054,752.
- 22 -
including “The X-files,” “The Kill Point,” and “Star Trek: Deep Space 9;” and in video games,

including “Golden Eye 007”, and “007: Night Fire.” Jan. 20 Response, Exhibit 26.

There are also websites devoted to identifying guns used in movies, on television, in video

games and in anime. Thus, while the images of the PPK Design in movies is arguably often brief,

these websites provide freeze frame images of the guns scene by scene. For example,

www.imfdb.org is devoted to identifying the guns used in popular culture movies and television

shows by scene and character. See Aug. 6 Response, Exhibit 1. Exhibit 1 includes a printout from

www.imfdb.org listing the films, television shows, video games and anime featuring the PPK (over

45 uses identified) and examples of the use and identification of the PPK. When one considers

how many impressions Applicant’s mark has received through this media, the numbers are

staggering. For example, two of the movies listed include The Departed, grossing $132 million in

the U.S. and $290 million worldwide and Spider-Man, grossing $403 million in the U.S. and

Canada. See Aug. 6 Response, Exhibit 2.

While the PPK has appeared in numerous Hollywood films and television shows described

above, Applicant does not pay for the appearances, nor does Applicant solicit any entities in the

movie or television industry in any way to obtain such appearances. Pflaumer Decl., ¶ 10 .

In summary, while Applicant has presented unrebutted direct evidence, Applicant also has

more than demonstrated the acquired distinctiveness of its PPK Design through circumstantial

evidence. Applicant’s continuous and exclusive use for over forty years in the United States,

extensive advertising and promotional expenses and materials, and third-party coverage of the PPK

Design, amply demonstrate that the product configuration at issue has acquired distinctiveness and

should be approved for publication.

e. Intentional Copying

Finally, the Google Images search reveals a few knock-offs and replica products

(unlicensed) based on the PPK Design; evidence of intentional copying of Applicant’s proposed

Design Mark. See Jan. 20 Response, Exhibit 30 (the PPK in the third row, second gun from

- 23 -
replica-gun.com is an unlicensed replica). Evidence of intentional copying serves as additional

support for Applicant’s claim of acquired distinctiveness. See McCarthy on Trademarks and

Unfair Competition §15:38 (4th ed.) (evidence of acquired distinctiveness comes from third party

copying of a design) (citing cases from each district); see also Vision Sports, Inc. v. Melville Corp.,

12 USPQ2d 1740 (9th Cir. 1989) ([P]roof of intentional copyright strongly supports an inference of

secondary meaning.”).

C. The Evidence Submitted by the Examining Attorney Does Not Rebut

Applicant’s Showing or Establish the PPK Design as a Common Pistol Design

Applicant has presented substantial direct and circumstantial evidence proving the

consuming public recognizes the PPK Design as a trademark. In sharp contrast, the Examining

Attorney has produced only images of other handguns, asserting that Applicant’s PPK Design is a

“common one.” See Office Action dated July 19, 2008 (other gun manufacturers “commonly use”

the configuration); Final Office Action (the configuration “is a common one”).

First, the direct and unrebutted evidence of record submitted by Applicant refutes and

overwhelms the Examining Attorney’s unsupported opinion. The images of other handguns

submitted by the Examining Attorney proves that different manufacturers utilize visually distinct

configurations. In fact, included in those images is an image of a federally-registered handgun,17

owned by Glock, Inc. (Reg. No. 2,807,747). While the Examining Attorney may not appreciate

the differences between various gun configurations, the consuming public does. Handguns are

highly specialized and regulated goods which only can be sold through authorized dealers. There

are federal and state regulations and requirements surrounding the purchase of a handgun. While

the process can vary from state to state, it often involves obtaining a permit, a background check,

fingerprinting, an application and a waiting period. (See http://www.nraila.org/GunLaws/ for a

listing of Federal and State firearm laws). Taking into consideration the rigorous requirements to

purchase a handgun, consumers of Applicant’s goods are more likely to pay close attention to

product details, including design and configuration. Thus, while the Examining Attorney may not

17
The image of the Glock was submitted with the Final Refusal, page 5 of the images.
- 24 -
From: Rappaport, Seth A.

Sent: 12/15/2009 5:00:46 PM

To: TTAB EFiling

CC:

Subject: U.S. TRADEMARK APPLICATION NO. 77096523 - 13132

*************************************************
Attachment Information:
Count: 1
Files: 77096523.doc
 UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/096523

MARK:
*77096523*
CORRESPONDENT ADDRESS:
STEPHEN R. BAIRD GENERAL TRADEMARK INFORMATION:
WINTHROP & WEINSTINE, P.A. http://www.uspto.gov/main/trademarks.htm
225 S 6TH ST STE 3500
MINNEAPOLIS, MN 55402-4629 TTAB INFORMATION:
http://www.uspto.gov/web/offices/dcom/ttab/index.html
APPLICANT: Carl Walther GmbH

CORRESPONDENT’S REFERENCE/DOCKET NO:

13132
CORRESPONDENT E-MAIL ADDRESS:
sbaird@winthrop.com

EXAMINING ATTORNEY'S APPEAL BRIEF

Applicant has appealed the trademark examining attorney’s refusal to register the

three-dimensional configuration of a pistol. Registration was refused under Trademark

Act Sections 1, 2 and 45, 15 U.S.C. §§1051-1052 and 1127, on the ground that the

applicant’s mark, when used in connection with the identified goods, is a non-distinctive

configuration of goods and, therefore, will not be recognized as an identifier of source for

the identified goods. The examining attorney also rejected the applicant’s claim of

acquired distinctiveness on the grounds that the applicant’s evidence is insufficient to

show that the applicant’s mark has acquired distinctiveness in the marketplace as a source

identifier.

FACTS
 On February 1, 2007, applicant Carl Walther GmbH filed an use-based trademark

application seeking registration on the Principal Register of a three-dimensional

configuration of a pistol for “Firearms; pistols; air pistols; and air soft guns.” In an Office

Action mailed April 13, 2007, the examining attorney informed the applicant that the

search of the Office records and review of the merits of the application would be deferred

pending the applicant’s response to the issues raised in the Office Action. The examining

attorney required that the applicant amend the drawing so that it meets the drawing

requirements for a configuration mark.

The applicant responded on October 3, 2007 and submitted an amended drawing

of the mark and a description of the mark. The applicant also submitted, on October 5,

2007, a Petition to the Director requesting a waiver of 37 CFR § 2.52(b)(2) which

requires the submission of a drawing presenting only a single rendition of a three

dimensional mark. On December 31, 2007, the Petition to the Director was granted.

On June 30, 2008, the applicant submitted a letter requesting information

regarding the status of the application. In an Office Action mailed on July 19, 2009, the

examining attorney refused registration based on functionality under Trademark Act

Section 2(e)(5). The examining attorney also refused registration of the mark under

Trademark Acts Sections 1, 2 and 45 on the ground that the mark is a non-distinctive

configuration of goods. The applicant was also required to submit a drawing and

description of the mark that meet the requirements for a configuration mark under TMEP

Section 807.08.

On January 26, 2009, the applicant filed a response to the Office Action. The

applicant submitted a claim of acquired distinctiveness along with an amended drawing

and an amended description of the mark.. On February 18, 2009, the examining attorney

issued a final Office Action, making final the Non-Distinctive Configuration of Goods

Refusal while withdrawing the Functionality refusal under Section 2(e)(5) and stating

that the requirement that the applicant submit a proper configuration drawing and

description of the mark had been satisfied.

The applicant noted the instant appeal on August 6, 2009, and concurrently filed a

request for reconsideration. The case was remanded to the examining attorney on August

6, 2009. The examining attorney denied the request for reconsideration on August 13,

2009. The case was then returned to the board for resumption of the applicant’s appeal.

On October 19, 2009, the applicant filed its appeal brief. The file was forwarded

to the examining attorney for statement on October 19, 2009.

ISSUE

The issue on appeal is whether applicant’s mark, being a non-distinctive

configuration of goods, can function as a mark to identify the source of the identified

goods under Trademark Act Sections 1, 2 and 45 and whether the evidence submitted by

the applicant is sufficient to establish acquired distinctiveness.

ARGUMENT

THE APPLICANT’S MARK IS A NON-DISTINCTIVE CONFIGURATION OF

GOODS AND THE APPLICANT HAS NOT SUBMITTED SUFFICIENT
EVIDENCE TO SHOW THAT THE MARK HAS ACQUIRED
DISTINCTIVENESS IN THE MARKETPLACE WITH RESPECT TO THE
IDENTIFIED GOODS.
 The applicant applied to register a configuration of a pistol for “Firearms; pistols;

air pistols; and air soft guns.” The applicant describes the mark as follows:

The mark consists of the three-dimensional configuration of a pistol. The mark

includes 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. The mark includes the lines and ridges along

both sides of the slide, barrel, and frame indicating groves and ridges on the

surface of the pistol; the vertical and angular lines on the rear of the slide

indicating ridges on the surface of the pistol; the pattern on the hand grip; the

shape and location of the magazine release lever; the shape and appearance of the

trigger guard; the exterior shapes and designs on the hand grip or other portions of

the pistol and the placement or position of those shapes; the shape and proportion

of the barrel, and the shape, proportion, and position of the accessory rail. The

dotted lines indicate features that are not claimed as a part of the mark including:

the shape of the front sight and rear sight; and the shape of the trigger.

A. The applicant’s mark is a non-distinctive configuration of goods

The applied-for mark consists of a nondistinctive product design or nondistinctive

features of a product design that is not registrable on the Principal Register without

sufficient proof of acquired distinctiveness. Trademark Act Sections 1, 2 and 45, 15

U.S.C. §§1051-1052, 1127; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205,

210, 213-14, 54 USPQ2d 1065, 1068-69 (2000); In re Slokevage, 441 F.3d 957, 961, 78

USPQ2d 1395, 1398 (Fed. Cir. 2006); see TMEP §1202.02(b)(i). The Supreme Court in
Wal Mart Stores, Inc. held that features of a product’s design can never be inherently

distinctive and are registrable only upon a showing of secondary meaning. Id. at 213–14,

54 USPQ2d at 1069. The Supreme Court noted that product design almost invariably

serves purposes other than source identification, and that consumers are aware that even

the most unusual product design (such as a cocktail shaker shaped like a penguin) is

intended not to identify the source, but to render the product itself more useful or

appealing. Id.

TMEP §1202.02(b)(i) states that the examining attorney must refuse registration

on the ground that the proposed mark is not inherently distinctive in all applications

seeking registration of a product design, unless the applicant claims that the mark has

acquired distinctiveness under §2(f) and includes sufficient evidence to show that the

mark has acquired distinctiveness.

B. The applicant’s evidence is insufficient to establish that the applied-for mark has
acquired distinctiveness as a source identifier in the marketplace with respect to the
identified goods

1. The Burden of Proving That a Mark Has Acquired Distinctiveness is on

the Applicant.

In determining whether the proposed mark has acquired distinctiveness, the

following factors are generally considered: (1) length and exclusivity of use of the mark

in the United States by applicant; (2) the type, expense and amount of advertising of the

mark in the United States; and (3) applicant’s efforts in the United States to associate the

mark with the source of the goods and/or services, such as unsolicited media coverage

and consumer studies. See In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d
1420, 1424 (Fed. Cir. 2005). A showing of acquired distinctiveness need not consider all

of these factors, and no single factor is determinative. In re Steelbuilding.com, 415 F.3d

at 1300, 75 USPQ2d at 1424; see TMEP §§1212 et seq. Evidence of acquired

distinctiveness may include specific dollar sales under the mark, advertising figures,

samples of advertising, consumer or dealer statements of recognition of the mark as a

source identifier, affidavits, and any other evidence that establishes the distinctiveness of

the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508

F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ

957 (TTAB 1979); TMEP §§1212.06 et seq.

The burden of proving that a mark has acquired distinctiveness is on the applicant.

Yamaha Int’l Corp. v. Yoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed.

Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d 945, 122 USPQ 372 (C.C.P.A. 1959);

TMEP §1212.01. An applicant must establish that the purchasing public has come to

view the proposed mark as an indicator of origin. Allegations of sales and advertising

expenditures do not per se establish that a term has acquired significance as a mark. An

applicant must also provide the actual advertising material so that the examining attorney

can determine how the term is used, the commercial impression created by such use, and

the significance the term would have to prospective purchasers. TMEP §1212.06(b); see

In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re

Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).

Furthermore, in cases involving product configuration, not only does the burden

of proving the mark has acquired distinctiveness rest with the applicant, but that burden is

even greater in such cases. See Yamaha, 840 F.2d 1572, 6 USPQ2d 1001; In re Meyer,
267 F.2d 945, 122 USPQ 372. In EFS Mktg. V. Russ Berrie & Co., 76 F.3d 487, 491, 37

USPQ2d 1646, 1649 (2d Cir. N.Y. 1996), the court stated that “consumers do not

associate the design of a product with a particular manufacturer as readily as they do a

trademark or product-packaging trade dress. They are more likely to be attracted to the

product for the product’s features, rather than for the source-identifying role that the

features might play.” As such, applicant’s evidence of acquired distinctiveness must be

considered within the context of this greater burden of proof.

The ultimate test in determining acquisition of distinctiveness under Trademark

Act Section 2(f) is not applicant’s efforts, but applicant’s success in educating the public

to associate the claimed mark with a single source. TMEP §1212.06(b); see In re

Packaging Specialists, 221 USPQ at 920; In re Redken Labs., Inc., 170 USPQ 526

(TTAB 1971).

2. The Evidence Submitted by the Examining Attorney Shows that the

Applicant’s Configuration is a Commonly Used Configuration for Pistols

and, Thus, the Applicant’s Evidence Must Show that this Particular

Configuration of a Pistol has Acquired Distinctiveness in the Marketplace

The applicant’s mark is a configuration of a pistol. The applicant has submitted

the drawing with the sight and the trigger in dotted lines. As such, these elements are not

part of the mark. However, the applicant’s mark still contains numerous elements that are

non-distinctive and common among pistols.

 The trademark examining attorney, in both the non-final and the final Office

actions, submitted numerous examples of other pistols that contain the same

configuration as the applicant’s goods. See the evidence attached to the non-final and the

final Office Actions. These other pistols contain the same placement of the elements that

make up the applicant’s mark. For example, Page 2 of the attached evidence in the final

Office Action shows a collection of pistols. These pistols share many of the same

elements of the applicant’s goods. The applicant’s product design and the designs

pictured in the evidence both contain a long, rounded barrel through which bullets are

fired sitting atop a rounded circle which houses the trigger and a rectangular grip.

Furthermore, the pistol pictured at the very bottom of the photograph seen on Page 2 of

the attached evidence in the final Office Action contains a part at the bottom of the gun

under the grip. The applicant’s mark also contains such a part.

Further, Page 4 of the evidence attached to the final Office Action shows two

pistols that are nearly identical to the configuration of the applicant’s goods. Both the

applicant’s pistol design and the pistol designs shown in the attached evidence contain a

rounded safety that appears on the back of the pistol, a safety holder that is rectangular in

shape, a rounded area that houses the trigger, a ridged grip, a rounded barrel through

which bullets are fired, and a butt that extends out from the bottom of the grip of the

pistol. These pistols also all contain the stated elements in the same location on the pistol.

This evidence clearly shows that the applied-for mark is nearly identical to many pistol

designs in the marketplace. As such, the applicant, to show acquired distinctiveness, must

clearly show that the applicant’s product configuration is recognized as an identifier of

source based on the applicant’s use of the mark as a mark in the marketplace.
 Thus, since the applicant is claiming that the pistol as a whole, minus the portions

shown in dotted lines, has acquired distinctiveness as an identifier of source in the

marketplace, the applicant must show that the pistol as a whole and all of the elements

that make up the pistol that are shown in solid lines have acquired distinctiveness. As

shown below, the applicant has failed to meet their burden in showing that the applied-for

mark (which is all of the parts of the configuration shown in solid lines) has acquired

distinctiveness in the marketplace as an identifier of source.

3. The Applicant’s Evidence is Insufficient to Establish Acquired

Distinctiveness

Three basic methods may be used to establish acquired distinctiveness under §2(f):
(1) A claim of ownership of one or more prior registrations on the Principal
Register of the same mark for goods or services that are the same as or
related to those named in the pending application (see 37 C.F.R. §2.41(b);
TMEP §§1212.04 et seq.);
(2) A statement verified by the applicant that the mark has become distinctive of
the applicant’s goods or services by reason of substantially exclusive and
continuous use in commerce by the applicant for the five years before the
date when the claim of distinctiveness is made (see 37 C.F.R. §2.41(b);
TMEP §§1212.05 et seq.); and
(3) Actual evidence of acquired distinctiveness (see 37 C.F.R. §2.41(a); TMEP
§§1212.06 et seq.).
The Applicant’s evidence in support of its claim under Section 2(f) consists of:

(1) a claim of substantially exclusive and continuous use of the mark for over five years;

(2) sales figures; (3) advertising and promotional material; (4) evidence of advertising

expenditures; (5) evidence of unsolicited media coverage; (6) survey evidence and

affidavits from individuals regarding the configuration of the applicant’s goods being
seen as a trademark; and (7) circumstantial evidence that includes evidence of

unsolicited media coverage.

a. Proof of Length of Use is Insufficient to Establish Distinctiveness

in the Case of Nondistinctive Product Configurations

TMEP Section 1212.05 states that “whether a claim of five years’ use will be

deemed acceptable to establish that the mark has acquired distinctiveness depends largely

on the nature of the mark in relation to the specified goods or services. For matter that is

not inherently distinctive because of its nature (e.g., nondistinctive product container

shapes, overall color of a product, mere ornamentation, and sounds for goods that make

the sound in their normal course of operation), evidence of five years’ use is not

sufficient to show acquired distinctiveness. In such a case, actual evidence that the mark

is perceived as a mark for the relevant goods or services would be required to establish

distinctiveness. See generally In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227

USPQ 417 (Fed. Cir. 1985) (color pink as uniformly applied to applicant’s fibrous glass

residential insulation); In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir.

1984) (configuration of pistol grip water nozzle for water nozzles); Nextel

Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393, 1401 (TTAB 2009) (the

Board noting that “the evidence required is in proportion to the degree of

nondistinctiveness of the mark at issue” in relation to a sound mark emitted by cellular

telephones in their normal course of operation); In re ic! berlin brillen GmbH, 85

USPQ2d 2021 (TTAB 2008) (configuration of an earpiece for frames for sunglasses and
spectacles comprised of three “fingers” near the hinge); In re The Black & Decker Corp.,

81 USPQ2d 1841 (TTAB 2006) (applicant successfully established acquired

distinctiveness for the design of a key head for key blanks and various metal door

hardware, where evidence submitted in support thereof included over eleven years of use

in commerce and significant evidence regarding industry practice, such that the evidence

showed that “it is common for manufacturers of door hardware to use key head designs

as source indicators…”); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142 (TTAB 1990)

(color green for medical instruments); In re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990)

(configuration of a pillow-pack container for ear plugs and configuration of a pillow-pack

container with trade dress (white circle surrounded by blue border) for ear plugs); In re

Star Pharmaceuticals, Inc., 225 USPQ 209 (TTAB 1985) (color combination of drug

capsule and seeds therein for methyltestosterone); In re Craigmyle, 224 USPQ 791

(TTAB 1984) (configuration of halter square for horse halters).

Thus, like the cases discussed above, a showing of five or more years of

continuous and exclusive use is insufficient in the present case to establish acquired

distinctiveness as the applied-for mark consists of a non-distinctiveness configuration of

goods. Although the applicant has been using the product configuration since 1969, there

is still no evidence “that consumers have come to recognize applicant’s product

configuration as an indication of source based upon this length of use.” In re Ennco

Display Systems, Inc., 56 USPQ2d at 1286.

b. The Actual Evidence Presented in This Case is Insufficient to

Merit a Finding of Acquired Distinctiveness.
 Section 2(f) states that the substantially exclusive and continuous use must be “as

a mark.” 15 U.S.C. §1052(f). The case at hand is analogous to two cases decided by the

Board in the 1980s. In In re Craigmyle, the Board held that registrability under §2(f) not

established by sales over a long period of time where there was no evidence that the

subject matter had been used as a mark. In re Craigmyle, 224 USPQ 791 (TTAB 1984).

Furthermore, in In re Kwik Lok Corp, the Board held that declarations as to sales volume

and advertising expenditures held insufficient to establish acquired distinctiveness. The

Board noted that “[t]he significant missing element in appellant’s case is evidence

persuasive of the fact that the subject matter has been used as a mark.” In re Kwik Lok

Corp., 217 USPQ 1245, 1248 (TTAB 1983).

Much like in In re Kwik Lok Corp., the applicant in this case has submitted a great

deal of evidence with respect to advertising expenditures and sales figures along with

survey evidence and declarations that the applicant’s argues shows that the mark has

acquired distinctiveness as an identifier of source. However, the applicant’s evidence

does not show that the applied-for mark (the configuration of the goods) is seen as a mark

but merely that it is recognized as a weapon made by the applicant that has acquired a

level of fame. The applicant’s evidence fails to show that the applied-for mark, which is

the configuration of the pistol, is seen as an identifier of source by consumers.

1. Advertising and Promotional Campaigns

The applicant argues that the advertising and promotional materials stress the

product configuration in a trademark sense. However, the advertising and promotional

materials submitted by the applicant merely discuss the elegant design and craftsmanship

and the fame of the weapon as it was used by James Bond. Wording in advertising such
as “unique, sleek, and elegant,” “legendary,” “elegant craftsmanship,” and “the pistol that

made James Bond famous” do not point to the configuration of the applicant’s goods

being shown as a mark. There is nothing in the applicant’s advertising materials that

inform the consumer of how to identify the applicant’s goods and distinguish them from

similar goods in the marketplace. The examining attorney, as noted earlier, attached

images of various pistols that look almost identical to the applicant’s goods. These other

pistols contain the same placement of the elements that make up the applicant’s mark –

the barrel, the grip, the safety, etc.. Thus, consumers knowing of the applicant’s goods

through the applicant advertising that the gun is famous due to its appearance in the

James Bond series of films will not lead to those consumers being able to identify the

configuration of the applicant’s goods as an identifier of source.

Therefore, particularly in this field, the applicant’s advertising, for purposes of

showing acquired distinctiveness of the design of the product as a mark, must inform the

consumer that the product design in some way identifies the applicant as the source of the

goods. The kind and amount of evidence necessary to establish that a mark has acquired

distinctiveness in relation to goods or services depends on the nature of the mark and the

circumstances surrounding the use of the mark in each case. Yamaha Int’l Corp. v.

Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); Roux

Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re

Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Capital Formation

Counselors, Inc., 219 USPQ 916 (TTAB 1983). Considering the applied-for mark in the

case at hand, the applicant’s advertising and promotional materials fail to show that the

mark has acquired distinctiveness as an identifier of source in the marketplace. The fact
that the applicant may have intended that the look of its goods serve as an indication of

source does not make the proposed mark suitable for registration. In re Craigmyle, 224

USPQ at 793.

The mark must create a connection in the mind of the consumer between the mark

and the source of the goods. Herman Miller Inc. v. Palazzetti Imports and Exports, Inc.,

270 F. 2d 298, 311 (6th Cir. 2001). The fact that an applicant intends for a mark to serve

as a source indicator is insufficient to establish the subject matter as registrable. See In re

Craigmyle, 224 USPQ 791, 793 (TTAB 1984); In re Kwik Lok Corporation, 217 USPQ

1245, 1248 (TTAB 1983). “[T]he critical question of whether the designs are source

identifiers is not resolved solely on the intention of applicant or even promotion of the

designs as a mark. It is determined by prospective purchasers' recognition of the designs

as indicators of the source of the goods.” In re Petersen Manufacturing Co., 2 USPQ2d

2032, 2035 (TTAB 1987). Potential consumers would not regard the design of the

applicant’s goods as a source identifier. As the Board stated in In re Teledyne Industries,

Inc., 212 USPQ 299, 300 (TTAB 1981), the “[m]ere depiction of a product in advertising

does not demonstrate that it is used a mark.”

2. Survey Evidence and Affidavits/Declarations

The applicant also submitted survey evidence to show that the mark has acquired

distinctiveness as a trademark in the marketplace with respect to the identified goods.

Many of the respondents in the applicant’s surveys stated that they believed that the

silhouette or outline of the Walther PPK is recognizable as a trademark. However, much

like with the applicant’s advertising and promotional materials, the survey evidence
merely shows that the applicant’s goods have achieved a level of fame that allows

individuals to pick the pistol out of a crowded field of similar pistols. The survey

evidence does not show that consumers recognize the configuration of the pistol as a

mark that identifies the applicant as the source of those goods.

Furthermore, the applicant survey was conducting using a random sample from

subscribers to Intermedia Outdoor publications (publishers of Guns and Ammo and

Handguns magazines). To show secondary meaning, the survey must show that the

public views the proposed mark as an indication of the source of the product or service.

Boston Beer Co. L.P. v. Slesar Bros. Brewing Co., Inc., 9 F.3d 175, 28 USPQ2d 1778 (1st

Cir. 1993) (survey found insufficient to establish acquired distinctiveness where survey

demonstrates product-place association rather than product-source association); Nextel

Communications, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009). By only

surveying consumers with extensive knowledge of handguns, the applicant has not shown

that the public recognizes that the configuration of the applicant’s goods identifies the

source of the goods. Respondents to the applicant’s surveys were able to identify the

applicant’s configuration and the source of the goods based on the fame of the applicant’s

pistols and their knowledge of handguns. The survey evidence does not show that the

configuration of the applicant’s goods has acquired distinctiveness in the marketplace as

an identifier of source.

With respect to the affidavits submitted by the applicant, while this evidence is

relevant to the issue at hand, the applicant has merely surveyed individuals who have

superior knowledge about the applicant’s goods based on their substantial and continuous

involvement in the field of handguns. This evidence fails to show that the applicant’s
goods have acquired distinctiveness in the marketplace with respect to consumers who

purchase handguns or may be looking to purchase a handgun. Evidence that those who

are employed in the handgun industry, who are knowledgeable about handguns and

commonly buy and sell the applicant’s goods, view the applicant’s configuration as a

trademark is not persuasive. An applicant bears the burden of proving that a mark has

acquired distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572,

1578-79, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988); In re Meyer & Wenthe, Inc., 267 F.2d

945, 949, 122 USPQ 372, 374-75 (C.C.P.A. 1959); TMEP §1212.01.

Finally, although declarations that assert recognition of the mark as a source

indicator are relevant in establishing acquired distinctiveness, proof of acquired

distinctiveness requires more than evidence of the existence of a small number of people

who associate a mark with the applicant. In re The Paint Prods., Co., 8 USPQ2d 1863,

1866 (TTAB 1988). While the declarants discuss the fame of the applicant’s product and

the general design of the applicant’s goods, they do not state specifically how other pistol

designs are different and how the proposed mark is seen as an identifier of source in that

it identifies the applicant as the source of the goods. Thus, this evidence submitted by the

applicant is insufficient in establishing that the applied-for mark has acquired

distinctiveness as an identifier of source in the marketplace.

3. Circumstantial Evidence

The applicant argues that the applied-for mark has acquired distinctiveness

because the applicant has used the PPK design in the United States exclusively and

continuously for over forty years. Whether a claim of five years’ use will be deemed
acceptable to establish that the mark has acquired distinctiveness depends largely on the

nature of the mark in relation to the specified goods or services.” TMEP Section

1212.05. “For matter that does not inherently function as a mark because of its nature

(e.g., nondistinctive product container shapes, overall color of a product, mere

ornamentation), evidence of five years’ use is not sufficient to show acquired

distinctiveness. In such a case, actual evidence that the mark is perceived as a mark for

the relevant goods or services would be required to establish distinctiveness.” TMEP

Section 1212.05. Although the applicant has been using the product configuration for

more than forty years, there is still no evidence “that consumers have come to recognize

applicant’s product configuration as an indication of source based upon this length of

use.” 56 USPQ2d at 1286. Furthermore, the evidence does not show the applicant has

used the design of the goods as a mark for over forty years. The applicant merely states

that they have been using the design for over forty years. Nothing in the record shows

that the applicant has been holding out the configuration of the goods as an identifier of

source for over forty years.

The applicant also argues that the applied-for mark has acquired distinctiveness

because the applicant’s advertising efforts have been substantial. The mark must create a

connection in the mind of the consumer between the mark and the source of the goods.

Herman Miller Inc. v. Palazzetti Imports and Exports, Inc., 270 F. 2d 298, 311 (6th Cir.

2001). The fact that an applicant intends for a mark to serve as a source indicator is

insufficient to establish the subject matter as registrable. See In re Craigmyle, 224 USPQ

791, 793 (TTAB 1984); In re Kwik Lok Corporation, 217 USPQ 1245, 1248 (TTAB

1983). “[T]he critical question of whether the designs are source identifiers is not
resolved solely on the intention of applicant or even promotion of the designs as a mark.

It is determined by prospective purchasers' recognition of the designs as indicators of the

source of the goods.” In re Petersen Manufacturing Co., 2 USPQ2d 2032, 2035 (TTAB

1987).

The applicant purports that its mark has acquired distinctiveness through

advertising and promotion. However, there is no evidence of record that the applicant

has in any way promoted the configuration as a source identifier or that it has established

a link between the mark and the origin in the mind of the consumer. The applicant’s

advertising points to the fame of the goods based on the use of the pistol in the James

Bond series of films and the fact that the applicant’s goods are recognized as a famous

pistol in the marketplace. The advertising done by the applicant, while substantial, does

not show that the configuration of the applicant’s goods has acquired distinctiveness as a

mark because it does not point to the configuration of the goods as an identifier of source.

Finally, the applicant points to numerous instances of unsolicited media coverage

of the applicant’s goods. However, as noted earlier, the media coverage of the applicant’s

goods has to do with the fame of the goods. The media coverage does not point to the

design or the configuration of the pistol as an indication that the applicant is the source of

the identified goods. While consumers may recognize the applicant’s pistol as the one

used in numerous films, such as the James Bond series of films, “Bad Boys II,” and

“Lethal Weapon,” this evidence does not show that those consumers recognize the design

or configuration of the pistol as a trademark that identified the applicant as the source of

the goods. Nothing in any of the material submitted by the applicant with respect to

unsolicited media coverage refers to the product’s configuration as a source of origin.

The fact that the applicant may have intended that the look of its goods serve as an

indication of source does not make the proposed mark suitable for registration. See In re

Craigmyle, 224 USPQ 791, 793 (TTAB 1984).

CONCLUSION

For the foregoing reasons, the refusal to register on grounds that the mark is a

non-distinctive product configuration within the meaning of Trademark Act Sections 1, 2

and 45, 15 U.S.C. Sections 1051, 1052, and 1127 which has failed to acquire

distinctiveness under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f), should be

affirmed.

Respectfully submitted,

/Seth A. Rappaport/
Seth A. Rappaport
Trademark Examining Attorney
Law Office 103
Phone: (571) 270-1508
Fax: (571) 270-2508

Michael Hamilton
Managing Attorney
Law Office - 103
 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA325010
Filing date: 01/04/2010
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 77096523
Applicant Carl Walther GmbH
Correspondence KAREN A. BRENNAN
Address WINTHROP & WEINSTINE, P.A.
225 S 6TH ST STE 3500
MINNEAPOLIS, MN 55402-4629
UNITED STATES
sbaird@winthrop.com
Submission Reply Brief
Attachments Reply Brief.pdf ( 14 pages )(775328 bytes )
Filer's Name Karen A. Brennan
Filer's e-mail sbaird@winthrop.com, kbrennan@winthrop.com, trademark@winthrop.com,
trademark@winthrop.com
Signature /Karen A. Brennan/
Date 01/04/2010