TMEP 1202.03(c): "Secondary Source"

October 2017 Edition of the TMEP

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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 being refused as ornamental. 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) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on a foreign registration under §44(e) or §66(a) of the Trademark Act for which an affidavit or declaration of use in commerce under §8 or §71 has been accepted; (3) non-ornamental use of the mark in commerce on other goods or services; or (4) 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 under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §§1051(c)   or (d), has been filed is not sufficient to show secondary source. If the applicant establishes that the proposed mark serves as an identifier of secondary source, the matter is registrable on the Principal Register.

In In re Paramount Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982), the Board held that MORK & MINDY was registrable for decals because the applicant had a television series of that name and had previously registered MORK & MINDY for various goods and services, and 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. 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.

Id. at 182.

In Paramount, the Board stated that "[t]he ‘ornamentation’ of a T-shirt can be of a special nature which is [sic] inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source." 213 USPQ at 1112. 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." Id. 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 of origin." Id. at 1114.

See also In re Watkins Glen Int’l, Inc., 227 USPQ 727, 729 (TTAB 1985) (reversing the refusal and finding 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, 50 (TTAB 1975) (reversing the refusal and holding EXPO ‘74 registrable for handkerchiefs and T-shirts, since 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 proposed mark on various items will not establish that the proposed mark 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) (affirming the refusal to register ASTRO GODS and design for T-shirts, 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).