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Brand Owners Should Use “Look For” Advertising When It Comes to Trade Dress

Product configuration can be protected as trade dress, a form of trademark protection. A recent TTAB appeal discussed the role of “look for” advertising in connection with the federal protection of the product configuration as a trademark. Look for advertising refers to advertising that directs the potential consumer to look for certain features in order to identify its brand of product. By such advertising technique, the brand owner establishes a distinctive feature associated in the mind of the consumer with its product. This creates the required level of consumer recognition of the product feature with the brand, qualifying it for federal trademark registration.

In the recent case of Lululemon’s application to register its yoga mat shape as a mark (USSN 86718537), LuLulemon argued that its single rounded corner was distinctive of its brand of yoga mat. The TTAB did not agree and provided examples of other yoga mats with rounded corners. The TTAB found that there was inadequate evidence that the single rounded corner was distinctive, commenting that the company did not use “look for” advertising. While Lululemon submitted evidence of a tremendous volume of sales, high product ratings and its substantial advertising expenditures in support of its claim of acquired distinctiveness, the TTAB found that such evidence was more indicative of the popularity of the product than the consumer association of the one rounded corner with the Lululemon brand. The TTAB also noted the long-term exclusive use of a product configuration is not sufficient to establish the requisite acquired distinctiveness.

The applicant must establish that it has satisfied the requirement for its application to be successful. It is a high burden and there is no formula for what type of evidence will meet the burden. Traditional evidence such as that used in the Lululemon case is not always successful. The takeaway for this case is to prominently and regularly use “look for” advertising if you have a particularly distinctive product configuration. That will seal the deal in most cases where federal trademark protection of that feature is sought to protect against copycat look-alikes.

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