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Recent Trademark Decision Shows Getting a Trademark Registration for Geometric Shapes Is a Tough Bet

In In re IGT, the Trademark Trial and Appeal Board (TTAB) affirmed the Examiner’s refusal to register geometric shapes used in the applicant’s gaming machines.

While the decision does not offer anything new or surprising from a trademark perspective, it is a good example of the challenges in obtaining trademark registrations for geometric shapes, especially if the shapes are used merely as borders for information or as background.

Introduction

Generally, it is challenging to obtain registrations for common geometric shapes like circles, squares, triangles, ovals, and rectangles. It is especially difficult to register marks for geometric shapes when used as background. When used as background, a trademark examiner will likely determine that those shapes are not inherently distinctive. This determination requires the applicant to provide evidence to prove that it has acquired distinctiveness, which means that consumers understand the geometric shapes to be a source indicator due to an applicant’s extensive and continuous use. Evidence can include the duration and extent of use of the geometric shapes as marks, advertising and promotional materials, third-party media coverage, survey evidence, evidence of actual confusion, or evidence that another copied the geometric shapes at issue.

In re IGT Trademark Registration

In this case, Applicant IGT was refused registration by the Examiner for geometric shape designs covering “gaming machines, namely, devices which accept wages.” The applied-for marks included the below marks, and the Applicant also filed applications for non-color versions of the same marks:

 Gaming Machine Display Gaming Machine Display Gaming Machine Display

The applicant submitted pictures of a gaming machine and portions of its display as specimens:

 Gaming Machine Display Gaming Machine Display Gaming Machine Display

The Examiner found the shapes failed to function as trademarks and had not acquired distinctiveness. The TTAB affirmed the refusals. The Board agreed with the Examiner on both points.

The Board found that the shapes do not function as marks and are not inherently distinctive because

  • The shapes serve as a frame for information relevant to playing the video poker game; and therefore, consumers will not immediately rely on those shapes as marks.

  • Geometric shapes, when used as backgrounds for the display of word marks, are not inherently distinctive, e.g., SERIAL geometric shape used as background displaying words trademark registrationgeometric shape used as background displaying words trademark registration.

  • The shapes were merely part of the poker machine displays and did not stand out as marks.

  • The shapes were used numerous times and relevant to the gameplay and its instructions, rather than being used as a trademark.

  • Other branding used on the display reduces the likelihood that consumers will recognize the shapes as trademarks.

The Board also found that despite 20 years of use, the Applicant failed to prove acquired distinctiveness because:

  • The evidence did not show that consumers perceive shapes as trademarks because other prominent branding is also present on the gaming machines.

  • The applicant did not use shapes in promotions (“look for” advertising).

  • Media coverage did not reference the shapes.

  • The applicant offered no direct evidence of acquired distinctiveness (surveys, actual confusion, copying).

Conclusion

This decision affirms the challenges of obtaining trademark registration over common geometric shapes.  If those shapes are being merely used as background or border, and not as a primary brand, the ability to obtain a registration seems nearly impossible.  This decision reminds trademark owners not to double down on commonly used shapes.  If you do, the House will likely win.

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About this Author

Stephani Spangler Trademark Attorney Norris McLaughlin
Associate

Stephanie S. Spangler dedicates her practice to trademark and copyright matters.  She has represented clients from startups to Fortune 100 companies in a variety of industries, including technology, food and beverage, e-commerce, apparel, cannabis, jewelry, video games, film, and arts and entertainment.

Stephanie routinely counsels clients on contentious and non-contentious intellectual property matters, focusing on domestic and international trademark prosecution, copyright and trademark enforcement, and licensing.  She works with clients to find creative solutions for the...

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