TMEP 1202.19(k): Examples of Repeating-Pattern Marks
October 2017 Edition of the TMEP
Previous: §1202.19(j) | Next: §1203
1202.19(k) Examples of Repeating-Pattern Marks
Registered Repeating-Pattern Marks
U.S. Registration No. 3826587 (Supplemental Register)
Mark Description: "The mark consists of a repeating pattern of hexagonal shapes printed or stitched on the inner lining of shoe uppers. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark on the goods."
Goods: Shoes, in International Class 25.
Note: Although the shape of the shoe in the drawing differs slightly from the shape of the shoe in the specimen, the drawing is a substantially exact representation of the mark as used on the goods.
U.S. Registration No. 3679828 (Principal Register – §2(f))
Mark Description: "The mark consists of a repetitive diamond pattern on the cloth speaker grill of a musical instrument amplifier. The dotted lines shown on the drawing are for purposes of positioning only and do not comprise a feature of the mark."
Goods: Musical instrument amplifiers, in International Class 9.
Note: The application for this mark included a large amount of evidence to establish that the mark had acquired distinctiveness as a source indicator, including samples of marketing materials, excerpts from publications, and numerous consumer declarations.
U.S. Registration No. 3342382 (Principal Register - Cancelled)
Mark Description: "The mark consists of a repeating pattern of ‘AV’ on the face of a watch."
Goods: Watches, in International Class 14.
Note: The drawing shows the outline of the watch in broken lines, but the mark description does not specify the meaning of the broken lines. As indicated in TMEP §§807.08 and 1202.19(b), descriptions of marks containing broken lines must indicate the significance of the lines.
U.S. Registration No. 4100365 (Supplemental Register)
Mark Description: "The mark consists of a plaid design located on and covering the entire perimeter of the side border of a mattress, the plaid design comprising a repeat pattern no larger than approximately 1 to 1.6 inches in both its horizontal and vertical dimensions. The matter shown in dotted lines is not part of the mark but merely serves to show the placement of the mark on the goods."
Goods: Mattresses, in International Class 20.
Note: Although the entire shape in the drawing here is not depicted in broken lines, as indicated in TMEP §§807.08 and 1202.19(a)(i), broken lines must be used to indicate the shape of an item depicted in a drawing if the shape is not claimed as part of the mark.
U.S. Registration No. 1251171 (Principal Register)
Mark Description: "The mark consists of a design showing the words ‘Rip-N-Zip’ repeated in a diagonal pattern along a strip extending across the upper portion of the multiwall bags."
Goods: Reclosable Multiwall Bags, in International Class 22.
Note: The drawing shows the outline of the goods in broken lines, but the mark description does not specify the meaning of the broken lines. As indicated in TMEP §§807.08 and 1202.19(a)(i), marks containing broken lines must indicate the significance of the lines (e.g., that they indicate matter that is not part of the mark).
U.S. Registration No. 2963354 (Principal Register)
Goods: Perfumery; cosmetics, in International Class 3.
Note: Here, the repeating pattern is not a common, widely used pattern, but is instead composed of a stylized depiction of the wording DIOR. Furthermore, the pattern is placed only on part of the goods, in a place where a trademark might appear. Although a repeated pattern often produces an ornamental effect, the repeated element here is distinctive and could serve as a source indicator if presented in a single instance, rather than being repeated. Accordingly, the mark is, as used on the goods, inherently distinctive. See TMEP §§1202.19(e)(i)–(e)(i)(E).
Although this registration does not include a mark description, under TMEP §§808.02 and 1202.19(b), a mark description for a repeating-pattern mark must accurately describe the elements that appear in the mark and indicate that they are repeated. In addition, to use a swatch-type drawing like the one shown here, the applicant must satisfy the requirements described in TMEP §1202.19(a)(iii). Otherwise, a drawing showing placement on the relevant item is required. See TMEP §1202.19(g)(ii).
Making Inherent Distinctiveness and Inconsistent Goods/Services Determinations
The following mock example is provided to illustrate concepts involved in determining whether a mark is inherently distinctive and whether the identified goods or services are consistent with the drawing. See TMEP §§1202.19(e)(i)–(e)(i)(E) and 1202.19(f) for additional information.
Mark Description: The mark consists of a repeated houndstooth pattern applied to the entire exterior surface of the side and end panels of a handbag. The matter shown in broken lines is not part of the mark and serves only to show the placement of the mark on the goods.
Goods: Handbags; purses; walking canes, in International Class 18.
Note: Although source-indicating matter is often displayed in a repetitive manner on the surface of handbags and purses, here the mark consists of a common pattern, houndstooth, which is widely used on clothing, fashion accessories, household items, and many other goods. There is nothing unusual or distinctive about the manner in which this common pattern is displayed or placed, and thus the pattern will likely be perceived as purely ornamental. Therefore, the mark is not inherently distinctive and does not function as a source indicator for the goods. See TMEP §§1202.19(e)(i)–(e)(i)(E).
In addition, some of the identified goods are inconsistent with the drawing. While the handbag shown in the drawing is not part of the mark, the drawing nonetheless limits the mark to the particular manner of use shown. The mark could be applied in the manner shown to handbags and purses, but not to walking canes. Therefore, it is appropriate to refuse registration of the mark as to "walking canes" on the ground that the mark, as depicted in the drawing, fails to function as a mark for those goods. See TMEP §§1202.19(f)–(f)(ii).
While the pattern shown in this mock example is not distinctive as depicted in the drawing, it is possible for a commonly used pattern to be inherently distinctive, or to otherwise acquire distinctiveness, if it is used in an unusual manner on the goods, such as when the pattern appears in a unique way on a particular portion of the goods.