Audemars Piguet has been handed a loss in its bid to register what it says are source-indicating aspects of its most famous watch collection. In a precedent-setting decision on January 2, the Trademark Trial and Appeal Board (“TTAB”) affirmed the U.S. Patent and Trademark Office’s earlier refusal to give the go-ahead to two trademark applications for registration for “three-dimensional configuration design[s] of a watch” – namely, the watch face, bezel, and casing (and in one application, the band/bracelet) of its coveted Royal Oak. The Swiss watchmaker had sought to register the 3D configurations of its watch designs as trademarks, but has faced repeated pushback on the basis of functionality and a lack of acquired distinctiveness.
A Bit of Background: Audemars Piguet filed applications to register two watch designs (for use on “watches; wristwatches”), featuring a round watch face, an octagonal bezel with eight hexagonal screws, and a “Grande Tapisserie” pattern on the watch face – elements that, taken together, form a “unitary” mark that consumers recognize as a single source indicator. Despite the fame of the watches, the USPTO determined that certain design features, including the round watch face and bracelet links, are functional and thus, do not qualify for trademark protection.
Instead of making revisions to the trademark drawings in order to exclude “everything except the octagonal bezel and the eight hexagonal screwheads within the bezel,” elements that the USPTO found to have acquired distinctiveness, AP opted to appeal the USPTO’s decision to the TTAB.
Functionality & Competitive Necessity
At the heart of the TTAB’s opinion is its finding that the designs at issue are functional, inherently non-distinctive, and require substantial evidence of acquired distinctiveness to achieve trademark status. The Board highlighted evidence that round watch faces are nearly ubiquitous in the industry due to their utility in presenting time clearly. “The evidence of third-party watches confirms this, showing that while a few other shapes are sometimes used, far and away the most widely-used shape is circular,” the TTAB held, stating that “where, as in these cases, the evidence overwhelmingly demonstrates widespread use of a design feature an applicant claims is a part of its trade dress, that feature is functional.”
Similarly, the TTAB held that the trapezoid-shaped bracelet links are also functional, as they secure the watch to the wrist and allow flexibility.
In connection with its determination, the TTAB cited a handful of cases that drive home the competition-centric point that “a design is functional if it reflects ‘one of a limited number of equally efficient options available to competitors and free competition would be hindered by according the design trademark protection.’”
A High Bar for Acquired Distinctiveness
Turning its attention to distinctiveness, the TTAB considered Audemars Piguet’s argument that its designs have acquired distinctiveness through extensive advertising and over 50 years of use. It is worth noting that Audemars Piguet did not argue that its sales figures support a finding of acquired distinctiveness; after all, AP only makes about 50,000 Royal Oaks per year with price tags starting at $17,000-plus. Instead, the company argued that its advertising and promotion of the designs supports a finding of acquired distinctiveness.
The TTAB was largely unpersuaded, finding that “while the evidence is voluminous, there are several issues with it.” Among other things, the trademark panel highlighted the lack of “look for” advertising (as opposed to “advertising that simply includes a picture of the product or touts a feature in a non-source-identifying manner”) presented by AP. Another big issue for the TTAB was that the Royal Oak advertising materials provided by AP ads often included Audemars Piguet’s word marks, such as “AP” and “Audemars Piguet,” either in its ads and/or on the products themselves. This overshadows the role of the design elements in signaling the brand’s identity, the TTAB found.
Still yet, the TTAB held that AP’s catalogs show a wide array of “Royal Oak” designs, most of which do not feature all of the claimed elements of the watch body in the two applications for registration. As a result, the evidence “lose[s] significant force as proof that any of the other seven of the nine features of the watch bodies, or the nine features together, indicate source.”
TLDR: Without “look for” advertising explicitly directing consumers to view the designs as trademarks, the TTAB concluded that the evidence failed to meet the high burden required for product design marks.
A Unitary Design?
Finally, in one other thing worth noting. AP argued that each of the watch designs at issue is a “unitary mark that creates a single and distinct commercial impression which means it is an inseparable whole and has no unregistrable components,” and that the watches are viewed by consumers as such. In support of that argument, AP pointed to the declaration of Mr. Nolot, its Director of Supply Chain Operations. He testified that “high-end watch purchasers … view the design as a unique unitary combination of parts and as such do not seek to fragment the design into its constituent elements.”
The TTAB was unpersuaded, stating that the goods identified in the two applications (“watches; wristwatches” in Class 14) are “not limited to expensive or ‘high end’ watches.” As such, “the relevant consumers of watches include people seeking high-end watches, low-end watches, and watches in the middle range.” This is significant, per the TTAB, as Mr. Nolot’s declaration “does not speak to anything other than high-end watch consumers.” Beyond that (and “most significantly”), the TTAB said AP’s actions before the USPTO, namely, its own separation of elements in its applications, “belie the contention that the designs before us are unitary.”
The Upside for AP – and Takeaways
This proceeding was not a total loss for AP. While the TTAB refused to approve the two applications, the USPTO did find that AP provided sufficient evidence to show that some elements of the watches have acquired distinctiveness. These elements are the octagonal bezel and the eight hexagonal screwheads within the bezel.
This decision serves as a cautionary tale for luxury brands seeking to protect iconic product designs by way of trademark law. While copyright and design patent protections offer avenues for safeguarding creative works, trademark registration demands a robust showing that the design functions as a source identifier. The ruling also underscores the importance of strategic branding. To strengthen their claims, companies must invest in “look for” advertising that explicitly links product elements to their brand identity in the minds of consumers. Without this, even the most recognizable designs risk being deemed functional or merely aesthetic.
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