Jaguar Land Rover applied for the 3D Automobile design for “[m]otor land vehicles and structural parts therefor.” Below is the original drawing of the mark:
With evidence of use of the automobile as follows:
The design code (DC) attributed to the 3D Automobile Design is 18.05.01 which encompasses all types of automobiles and all types of designs, e.g., 2D and 3D (there are 5,652 marks that contain DC 18.05.01).
To narrow the search and obtain results only for 3D automobile designs, the search parameters were narrowed to those records with goods and services containing the word, “automobile”; drawing code “2” (ruling out 2D designs) and a mark description which includes the phrase, “three dimensional.” This search revealed 14 marks, a few are shown below:
Above from left to right, Reg. No. 3924361 (automobile kit), Reg. No. 4107953 (Bugatti), Reg. No. 3389149 (Porsche), Reg. No. 3352085 (BMW) and Reg. No. 3272975 (Smart).
The Examining Attorney conducted a different search – by DC (18.05.01), drawing code “2” and class 12. This brought up a wider range of marks (101), the results of which include 3D designs not designated as such. A few of the results from this search include:
Reg. No. 4545494 (Local Motors), App. No. 85034765 (front view), Reg. No. 3888272 (Audi), App. No. 77355668 (Shelby) and App. No. 76383872 (Safir GT 40 Spares), respectively.
After conducting the search, the Examining Attorney issued an office action containing two refusals: (i) a functional refusal (tires are functional and therefore cannot be part of the mark. Showing the tires in dotted lines and amending the mark description would overcome this refusal); and (ii) a non-distinctive product design refusal (product design is not inherently distinctive and consequently, acquired distinctiveness must be demonstrated before the application can be approved).
JLR responded with a new drawing and description that indicated the tires are not part of the mark. In connection with the non-distinctive product design refusal, JLR provided information “consisting of advertising, promotional materials, statements of recognition, and various other materials, including unsolicited third party materials, that evidence that … [the 3D Automobile design] has acquired distinctiveness as an indicator of source.” Some excerpts from the response are:
- The history of the 3D Automobile design – “In March 1961, … [JLR] established itself as an icon in motor vehicle design and performance when it unveiled the legendary … sports car … at the Geneva Motor Show … On its release, Enzo Ferrari, the Italian race car driver and founder of the Ferrari automotive brand, called … [JLR’s 3D Automobile design] ‘[t]he most beautiful car ever made.’ … Singer Frank Sinatra said … ‘I want that car and I want it now.’”
- Inclusion in the Museum of Modern Art (MoMa), New York City collection as 1 of 6 automobiles. In its brochure and press release when adding the automobile in 1996, MoMa “note[d] the vehicles ‘sleek, bullet-like shape’ and lauds its ‘innovative, influential design’ by stating, ‘[i]f ever a sports car elicited powerful emotions, the sleek Jaguar E-Type … is probably the most evocative. … ‘[a]though it was introduced over thirty years ago, its rounded projectile-like shape continues to be one of the most influential and often imitated styling forms.’”
- 2011 New York Times article that stated, “[w]ith its dramatic oval face and sleek body, as feline and predatory as the Jaguar name promised, it arrived into a world of tailfins like a jet fighter among prop planes.’”
- Appearance in over 400 movies, television shows, and documentaries including the Austin Powers movies.
- Author Eric Dymock, motoring correspondent for The Sunday Times, wrote in his book about Jaguars that “‘the E-type stamped its image on a generation and its shape became an icon of the so-called swinging sixties.’ (italics added).”
After submission of the materials in the response, the application was approved and a Registration (U.S. Reg. No. 4958314) issued May 17, 2016.
