1202.03 Refusal on Basis of Ornamentation
Subject matter that is merely a decorative feature does not identify and distinguish the applicant's goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans or other trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark as required by §§1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.
Generally, the ornamentation refusal applies only to trademarks, not to service marks. See TMEP §§1301.02 et seq. regarding matter that does not function as a service mark.
Matter that serves primarily as a source indicator, either inherently or as a result of acquired distinctiveness, and that is only incidentally ornamental or decorative, can be registered as a trademark. In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 184 USPQ 345 (C.C.P.A. 1975); In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982).
With regard to registrability, ornamental matter may be categorized along a continuum ranging from ornamental matter that is registrable on the Principal Register, to purely ornamental matter that is incapable of trademark significance and unregistrable under any circumstances, as follows:
(1) Ornamental matter that serves as an identifier of a "secondary source" is registrable on the Principal Register. For example, ornamental matter on a T-shirt (e.g., the designation "NEW YORK UNIVERSITY") can convey to the purchasing public the "secondary source" of the T-shirt (rather than the manufacturing source). Thus, even where the T-shirt is distributed by a party other than that identified by the designation, sponsorship or authorization by the identified party is indicated. See TMEP §1202.03(c).
(2) Ornamental matter that is neither inherently distinctive nor a secondary source indicator may be registered on the Principal Register under §2(f) if the applicant establishes that the subject matter has acquired distinctiveness as a mark in relation to the goods. See TMEP§1202.03(d).
(3) Ornamental matter that is neither inherently distinctive nor an indicator of secondary source, and has not acquired distinctiveness, but is capable of attaining trademark significance, may be registered on the Supplemental Register.
(4) Some matter is determined to be purely ornamental and thus incapable of trademark significance and unregistrable on either the Principal Register or the Supplemental Register. See TMEP §1202.03(a).
The examining attorney should consider the following factors to determine whether ornamental matter can be registered: (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness. These factors are discussed in the following sections.
1202.03(a) Commercial Impression
The examining attorney must determine whether the overall commercial impression of the proposed mark is that of a trademark. Matter that is purely ornamental or decorative does not function as a trademark and is unregistrable on either the Principal Register or the Supplemental Register.
The significance of the proposed mark is a factor to consider when determining whether ornamental matter serves a trademark function. Common expressions and symbols (e.g., the peace symbol, "smiley face," or the phrase "Have a Nice Day") are normally not perceived as marks.
The examining attorney must also consider the size, location anddominance of the proposed mark, as applied to the goods, to determine whether ornamental matter serves a trademark function. In re Dimitri's Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). A small, neat and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas a larger rendition of the same matter emblazoned across the front of a garment (or a tote bag, or the like) may be likely to be perceived merely as a decorative or ornamental feature of the goods. However, a small, neat and discrete word or design feature will not necessarily be perceived as a mark in all cases.
1202.03(b) Practices of the Trade
In determining whether a proposed mark is inherently distinctive, factors to be considered include whether the subject matter is unique or unusual in a particular field or whether it is a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods that would be viewed by the public as a dress or ornamentation for the goods. See, e.g., In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 184 USPQ 345 (C.C.P.A. 1975) (pentagon-shaped repetitive design applied to the entire surface of soccer balls); In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire); In re Chung, Jeanne & Kim Co., Inc., 226 USPQ 938 (TTAB 1985) (stripe design applied to sides of sport shoes)).
Even if a proposed mark is not inherently distinctive, it may be registered on the Principal Register if it has become distinctive of the applicant's goods in commerce. See TMEP §1202.03(d). The practices of the trade may be relevant in assessing the applicant's burden of proving that the proposed mark has become distinctive. Typically, more evidence is required if the proposed mark is a type of ornamental matter used so frequently in the relevant industry that consumers would be less apt to discern a source-indicating significance from its use. See Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (cornflower design recognized as a trademark for coffee percolators and culinary vessels andutensils). Cf. In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987) (affirming refusal to register design of morning glories and leaves for tableware, the Board noting that the design "has not been shown to be other than another decorative pattern without trademark significance....").
If the applicant cannot show that the proposed mark has acquired distinctiveness, the mark may be registered on the Supplemental Register if it is "capable of distinguishing the applicant's goods or services." 15 U.S.C. 1091. The practices of the trade may be relevant in determining whether a proposed mark is capable of distinguishing the goods or services. If the practices of the trade suggest that certain matter performs the function of a trademark by signifying to purchasers and prospective purchasers the goods of a particular entity and distinguishing the goods from those of others, the matter is assumed to be capable of distinguishing the applicant's goods and, therefore, may be registered on the Supplemental Register. See In re Todd Co., Inc., 290 F.2d 597, 129 USPQ 408 (C.C.P.A. 1961) (repeating pattern of green lines, used to cover the entire back surface of safety paper products (e.g., checks), held registrable on the Supplemental Register for safety paper products, where the record showed that it had long been the practice in the industry to use distinctive overall surface designs to indicate origin of the products).
1202.03(c) "Secondary Source"
To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those identified in the application. To show secondary source, the applicant may show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under §1 of the Trademark Act; (2) non-ornamental use of the mark in commerce on other goods or services; or (3) ownership of a pending use-based application for the same mark, used in a non-ornamental manner, for other goods or services. Ownership of an intent-to-use application for which no allegation of use has been filed is not sufficient to show secondary source. If the applicant establishes that the proposed mark serves as an identifier of a secondary source, the matter is registrable on the Principal Register.
See In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982), in which MORK & MINDY was held registrable for decals, because applicant had a television series of that name and had previously registered MORK & MINDY for various goods and services. The Board found that the primary significance of the term MORK & MINDY to a prospective purchaser of decals was to indicate the television series and the principal characters of the television series. Id. at 1112. The Board held that the case was controlled by its decision in In re Olin Corp., 181 USPQ 182 (TTAB 1973) (stylized "O" design registrable for T-shirts, where applicant had previously registered the "O" design for skis), in which that Board had stated:
It is a matter of common knowledge that T-shirts are "ornamented" with various insignia ... or . various sayings such as "Swallow Your Leader." In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, "Swallow Your Leader" probably would not be considered as an indication of source.
The "ornamentation" of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source....181 USPQ at 182.
In Paramount, applying the test set forth in Olin, the Board found that "the paired names 'MORK & MINDY,' while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized 'O' in Olin." 213 USPQ at 1113. The Board noted that "while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source ...." Id. at 1114.
See also In re Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985) (stylized checkered flag design registrable for patches and clothing items, where applicant had previously registered WATKINS GLEN and checkered flag design (with "WATKINS GLEN" disclaimed) for services); In re Expo '74, 189 USPQ 48 (TTAB 1975) (EXPO '74 registrable for handkerchiefs and T-shirts, where applicant, organizer of the 1974 World's Fair, had previously registered EXPO '74 for other goods and services).
A series of ornamental uses of the subject matter on various items will not establish that the subject matter functions as an indicator of secondary source; use as a trademark for the other goods or services must be shown. See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (refusal to register ASTRO GODS and design for T-shirts affirmed despite applicant's ornamental use of the proposed mark on other goods and appearance of applicant's trade name "Astro Gods Inc." on the T-shirt as part of a copyright notice).
1202.03(d) Evidence of Distinctiveness
As noted above, even if a proposed mark is not inherently distinctive, it may nevertheless be registered on the Principal Register under §2(f), 15 U.S.C. 1052(f), if it becomes distinctive of the applicant's goods in commerce. See TMEP §§1212 et seq. regarding acquired distinctiveness.
1202.03(e) Ornamentation with Respect to Intent-to-Use Applications
Generally, the issue of ornamentation is tied to the use of the mark as evidenced by the specimens. Therefore, no ornamentation refusal will be issued in an intent-to-use application until the applicant has submitted specimens of use with either an amendment to allege use under §1(c), or a statement of use under §1(d), 15 U.S.C. §§1051(c) or (d).
1202.03(f) Ornamentation: Case References
The following cases show the various ways in which ornamental matter was found not to function as a mark.
1202.03(f)(i) Slogans or Words Used on the Goods
Slogans or phrases used on items such as t-shirts andsweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating source of the goods. See Damn I'm Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) ("DAMN I'M GOOD," inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) ("SUMO," as used in connection with stylized representations of sumo wrestlers on applicant's T-shirts andbaseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation 'ASTRO GODS' and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's shirts."); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) ("YOU ARE SPECIAL TODAY" for ceramic plates found to be without any source-indicating significance).
See also TMEP §1202.04 regarding informational matter.
1202.03(f)(ii) Designs Used on the Goods
See In re Soccer Sport Supply Co., Inc., 507 F.2d 1400, 184 USPQ 345 (C.C.P.A. 1975) (evidence of record insufficient to establish distinctiveness of pentagon-shaped repetitive design applied to the entire surface of soccer balls); In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper band red and the lower band blue, for men's ribbed socks); In re Sunburst Products, Inc., 51 USPQ2d 1843 (TTAB 1999) (combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and therefore would not immediately be recognized or perceived as a source indicator); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance).
1202.03(f)(iii) Trade Dress on the Containers for the Goods
See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998) (design of container for Christmas decorations that resembles a wrapped Christmas gift not inherently distinctive); In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is essentially ornamental or decorative background and does not function as mark); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim).
1202.03(g) Ornamentation Cases and Acquired Distinctiveness
In the following cases, subject matter sought to be registered was found to have acquired distinctiveness as a trademark: In re Jockey International, Inc., 192 USPQ 579 (TTAB 1976) (inverted Y design used on underwear found to have acquired distinctiveness, where evidence showed extensive use on packaging and in advertising in a manner calculated to draw the attention of prospective purchasers to the design and for them to look at the design as a badge of origin); Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969) (blue cornflower design for coffee percolators and culinary vessels and utensils found to have acquired distinctiveness, where evidence showed extensive and prominent use of the design in advertising, use of the design on pins and aprons worn by sales promotion representatives in the course of their duties, and surveys andstatements of purchasers indicating that they recognized the design as indicating origin in applicant ).