On January 4, 2025, the U.S. Trademark Trial and Appeal Board (“TTAB”) upheld an earlier refusal to register two trademarks submitted by Swiss luxury watchmaker, Audemars Piguet.  Notably, Audemars Piguet sought protection for the three-dimensional configuration of particular design elements of its archetypal Royal Oak watch—namely, the watch face, case, bezel, and band or bracelet.

Analysis of the TTAB’s Considerations of Audemars Piguet’s Product Design Applications

Ultimately, the TTAB’s decision rested on one key issue: distinctiveness.  Under U.S. trademark law, a product design can only be registered if consumers recognize it as a source indicator – not simply an attractive or functional feature.  Although the Royal Oak has acquired undeniable fame and prestige in the world of luxury watches for over 50 years, the TTAB concluded that Audemars Piguet’s applications to register the watch’s design did not clear the bar for acquiring distinctiveness.

In Audemars Piguet’s original product design applications, it sought to register the round watch face, octagonal bezel with eight hexagonal screws, “Grande Tapisserie” waffle pattern on the watch face, and other design elements, arguing that they collectively formed a “unitary” mark, such that consumers recognize the sum of the watch parts as one whole source indicator of the brand.  The U.S. Patent and Trademark Office (“USPTO”) rejected this position and determined that certain elements were merely functional, and not eligible for trademark protection in the first instance.  Rather than revise the drawing in its applications to exclude the elements the USPTO already deemed ineligible for protection, Audemars Piguet elected to appeal the decision to the TTAB.

On appeal, the TTAB affirmed the USPTO’s refusal to register the applications on the exact same bases.  Particularly, Audemars Piguet’s proposed mark had not acquired distinctiveness where many of the elements in the drawing of its applications were functional and/or the most utilitarian amongst its market competitors.

At the heart of its ruling, the TTAB reasoned that even though Audemars Piguet’s most protectable design elements are aesthetically iconic and might have acquired some distinctiveness, the applications incorporated several other design elements that are functional and necessary or simply ornamental.  As a result, the proposed mark, even if accepted as a “unitary” mark, is not a source indicator for everyday consumers.  Put simply, just because the Royal Oak might be recognizable to some doesn’t mean its entire watch design is distinctive in the way trademark law requires.  Further, Audemars Piguet’s advertising and promotion of the Royal Oak thus far, although voluminous, could not resolve the watch design’s lack of acquired distinctiveness.  Where advertising materials featuring the watch design often includes word marks and phrases such as “AP”, “Le Brassus”, or “Audemars Piguet” to name a few, the TTAB held that these words diminish the likelihood that the design has acquired distinctiveness without them.  In other words, because Audemars Piguet did not submit evidence of “look for” advertising that called out the watch design, consumers viewing these ads would understand the word marks to be the source indicators, and not the watch design. 

Looking Ahead

This decision is a stark reminder of the hurdles brands face when trying to protect product designs, especially in industries where beauty and functionality are king. “Look for” advertising remains paramount when seeking to register product designs.  While Audemars Piguet contemplates its next move, this ruling is sure to be a talking point in trademark circles for quite some time as it’s a high-profile case study in the delicate dance between creative design and the strict requirements of trademark law—a legal high-wire performance where public esteem alone is not enough to guarantee a safety net.