T.M.E.P. § 1202.11
Background Designs and Shapes
Executive summary:
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1202.11 Background Designs and Shapes
"A background design which is always used in connection with word marks must create a commercial impression on buyers separate and apart from the word marks for the design to be protectible as a separate mark. In deciding whether the design background of a word mark may be separately registered, the essential question is whether or not the background material is or is not inherently distinctive.. If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential (citations omitted)." In re Chemical Dynamics, Inc., 839 F.2d 1569, 1570-1571, 5 USPQ2d 1828, 1829 (Fed. Cir. 1988).
Common geometric shapes, when used as vehicles for the display of word marks, are not regarded as indicators of origin absent evidence of distinctiveness of the design alone. Additionally, the Supreme Court stated in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) that color can never be inherently distinctive.
In the following cases, the evidence of distinctiveness was insufficient: In re Benetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998) (green rectangular background design not inherently distinctive; evidence of acquired distinctiveness found insufficient); In re Anton/Bauer Inc., 7 USPQ2d 1380 (TTAB 1988) (parallelogram designs used as background for word marks found not inherently distinctive; evidence of record held insufficient to establish acquired distinctiveness pursuant to §2(f)); In re Kerr-McGee Corp., 190 USPQ 204 (TTAB 1976) (affirming refusals to register escutcheon design used as a frame or border for words, under §2(f)).
In the following cases, the evidence of distinctiveness was sufficient: In re Schenectady Varnish Co., Inc., 280 F.2d 169, 126 USPQ 395 (C.C.P.A. 1960) (where use of applicant's design of a cloud and a lightning flash was always used as a background for the word "SCHENECTADY," evidence of record found sufficient to show acquired distinctiveness of the design alone as a trademark for synthetic resins); In re Raytheon Co., 202 USPQ 317 (TTAB 1979) (light-colored oval within black rectangular carrier considered not inherently distinctive; evidence of record found sufficient to establish acquired distinctiveness).
An applicant may respond to a refusal to register by submitting evidence that the subject matter has acquired distinctiveness, under §2(f) of the Trademark Act, 15 U.S.C. 1052(f). The examining attorney should scrutinize any submission that asserts distinctiveness solely on the basis of a statement of substantially exclusive and continuous use for five years to determine whether it truly establishes that the subject matter is perceived as a trademark by the purchasing public. The examining attorney may continue to refuse registration if he or she believes that the applicant's assertion does not establish that the matter is perceived as a trademark. The applicant may submit additional evidence to establish distinctiveness. See TMEP§§1212 et seq.