On September 16, 2020, Andrew Price was quoted in World Trademark Review on the complications associated with obtaining configuration trademarks.
According to the article, Customs and Border Protection (CBP) authorities seized a shipment of 2,000 OnePlus Buds at JFK airport. CBP described the headphones as “counterfeit Apple AirPods” and, despite OnePlus’s products being ostensibly genuine, would not release the products, claiming that they infringed upon Apple's configuration marks.
While configuration marks offer important additional protection for rights holders including the ability to take action against a potentially infringing product despite it not having a word mark, which is useful when seeking to combat the import of unlabeled counterfeit goods – brands have historically underutilized such marks.
One reason for this is that configuration marks are harder to obtain. Price notes that they “require a showing of acquired distinctiveness and this can be a heavy burden. He adds: “There are a number of landmines to avoid, like patent filing history or advertising that touts functionality; the application and prosecution process usually requires an extra degree of creativity to navigate; and business units do not often follow the best practice using ‘look for’ advertising to build product design as a brand so it may not capture the attention of in-house counsel.”
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