-Wes Anderson, Attorney

Way back in 2015, I blogged about an interesting non-traditional configuration mark application from Sony for its QX100 “Smartphone Attachable Lens-Style Camera” with the PTO.

Here we are nearly two years later, and Sony’s battle continues. As expected, the USPTO has refused registration of Sony’s mark on two main fronts: the functionality of the “cylinder” configuration in connection with “digital cameras” in Class 9, and the lack of acquired distinctiveness for a cylinder design. As of this writing, Sony recently responded to a final office action from the USPTO with a Request for Reconsideration on January 2, 2017. It seems an appeal before the Trademark Trial and Appeal Board is all but inevitable.

First, Sony has made liberal use of the “dotted line” in its amended drawings for the mark, essentially removing any claim of trademark protection for any control surface of the camera, and claiming only the cylindrical shape. Here is what the drawing looked like at the time Sony filed the application:

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…and compare that to the most-current amended drawing:

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Dotted lines are used in configuration trademark applications to claim functional or non-distinctive matter – in other words, they are useful to illustrate what the product configuration looks like, but the features themselves are not claimed as part of the trademark. And Sony made very clear in its Request for Reconsideration that “Applicant amended its drawing to remove everything except the cylindrical shape of the camera.” So there can be no doubt – Sony’s application is geared towards gaining a monopoly on cylinder-shaped digital cameras.

In the face of repeated functionality refusals, Sony’s latest substantive response gives short shrift to the issue:

The body of Applicant’s camera is a cylindrical shape.  The cylindrical casing must include, in addition to an optical zooming lens system, electronic circuitry and a battery in more limited space than a regular camera that has a rectangular body.  The cylindrical body makes designing the camera more difficult and more costly. Applicant’s design does not result from a comparatively simple or inexpensive method of manufacture that would support a finding of functionality. TMEP § 1202.02(a)(v)(D).

This addresses only one of the Morton-Norwich factors set forth for evaluating functionality – namely, whether the design is the result of a comparatively simple or cheaper method of manufacture. It does not address the other factors, including whether Sony promotes any of the utilitarian benefits of the design or whether there are utility patents for the product’s design. These factors were addressed earlier, and Sony did disclose several patent applications and registrations relating to the product, which could — depending on the patents’ claims — effectively preclude registration of the configuration mark on functionality grounds.

Also worthy of note – Sony’s Request for Reconsideration also included three years’ worth of sales numbers, and they indicate a precipitous drop in sales for the associated product from 2013 to 2015:

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While sales figures can be highly useful – indeed often all but probative – in the Section 2(f) context, what’s interesting here is the near-complete drop in sales of the associated product. This may still be enough to pass muster to show acquired distinctiveness in the design, but it may signal to the USPTO – or the Trademark Trial and Appeal Board – that Sony is not concerned about protecting the design of a specific, successful product, but rather the concept of a cylindrical shaped digital camera.

Will Sony pursue an appeal? It’s difficult to say for sure – looking on Sony’s website, you won’t find the QX100, or any other cylinder-shaped camera, listed for sale.