As it turns out, four days after Easter, the USPTO refused registration of the Big Green Egg’s claimed exclusive rights in the shape and color of its popular barbecue smoker and grill:
Specimen Refusal: Applicant submitted the above shown photograph of the goods as a specimen of use, but the Examiner noted that the drawing of the mark showed a smooth surface, lacking the obvious dimples, so overcoming the refusal will likely require a new drawing so it matches the use shown in the specimen; this will then raise the question of whether the dimples can be claimed as part of the non-traditional trademark.
The Examiner is inquiring about whether the dimples have a functional purpose, and if so, she is directing the Applicant to show them in dotted lines to make clear they are not claimed as part of the mark to be registered. If the Applicant attempts to claim them as part of the applied-for mark, showing them in solid lines, the next question will likely be whether that change constitutes a material alteration, requiring a new application.
Shape of Goods Incapable of Serving as Trademark: The Examiner indicated “the shape of the applicant’s goods is nondistinctive and incapable of functioning as a mark,” relying on “printouts from competitors’ websites and the patent applications . . . which demonstrate that the shape of the applicant’s goods is so commonly used in the industry that consumers are accustomed to seeing such elements on similar products.”
Color Green May Be Capable of Trademark Ownership: Here the Examiner seemed to direct Applicant’s next steps, noting: “The color green as applied to the goods does not appear to have any functional advantage and does not appear to be commonly used by the applicant’s competitors. Therefore, if the applicant limits the mark to just the color green applied to the goods, the applicant may be able to establish that this the product design has acquired distinctiveness or the applicant may be able to register the product design on the Supplemental Register.”
Shape of Goods is Functional and Must Not Be Included as Part of Claimed Trademark: This portion of the refusal relates back to the incapability refusal discussed above, but the Examiner labels the shape of the Big Green Egg with the dreaded F-Word: “[T]he shape of the goods is functional.” Then, the Examiner goes on to discuss the Morton-Norwich factors (that we have discussed numerous times before):
The existence of a utility patent that discloses the utilitarian advantages of the product or packaging design sought to be registered:
The Examiner wrote: “Although there does not appear to be an issued utility patent that describes the functional advantages of the shape of the applicant’s goods, there are several published patent applications that discuss the functional advantages of the shape of the applicant’s goods.”
The Examiner directed Applicant’s attention “to excerpts from its website, which discuss the advantages of the shape of the applicant’s goods,” but she did not provide quotations of the concerning language.
Facts pertaining to the availability of alternative designs:
As to the alternative design factor, the Examiner wrote: “The applicant’s goods are a type of grill known as a Komado grill. For this type of grill, the shape used by the applicant is one of a limited number of shapes, and based on the attached examples of competitor use appears to be the preferred shape for this type of grill.”
Facts pertaining to whether the design results from a comparatively simple or inexpensive method of manufacture:
The Examiner’s discussion of this factor seemed confused: “The . . . patent applications and other evidence indicate that the style of grill shown in the applicant’s mark is expensive (to purchase). Thus, it seems likely it is also expensive to manufacture. As a result, all of the above factors favor a finding that the shape of the goods is functional and unregistrable.” Generally, this factor should only disfavor Applicants who have chosen designs that result from the most simple or inexpensive methods of manufacture; this appears not to be the case here.
Last, the Examiner issued an Informational Requirement, basically a set of very pointed questions and requests for advertising, promotional materials, and explanatory materials, that could lead to additional grounds for further functionality refusals, depending on what the materials show and the answers to the questions posed.
So, what do you think, is the shape of The Big Green Egg really nothing more than a Kamodo style grill, or does it have noticeable and distinguishing elements that might permit the particular shape of The Big Green Egg to be owned as part of the claimed non-traditional trademark?
If, in the end, The Big Green Egg is not allowed to claim the shape, and the color green is all that is left, is that enough to support registration and exclusive ownership?
Stay tuned, as we continue to monitor The Big Green Egg’s hunt for non-traditional trademark protection and registration.