Saturday, April 19, 2008

Precedential No. 20: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

The Board affirmed "mere ornamentation" refusals of the three alleged marks shown immediately below (each described as a "stitching design on side-by-side pockets") for jeans and other clothing items, finding that the designs fail to function as trademarks. Applicant relied only on the alleged inherent distinctiveness of the designs, without claiming acquired distinctiveness. In re Right-On Co., Ltd., 87 USPQ2d 1152 (TTAB 2008) [precedential].

Examining Attorney Gina M. Fink maintained that the designs are merely ornamental and not inherently distinctive, and would not be perceived as source indicators. [Because the applications were based on Section 66(a), amendment to the Supplemental Register was not available.] She relied on several articles discussing stitching as a way of decorating clothing, and argued that Applicant's designs "do not incorporate any elements that look any different than any other decorative stitching patterns," and that the color combination of blue and gold is "hardly unique."

Applicant Right-On contended that it is "common practice in the trade to use stylized stitching on hip pockets to distinguish manufacturers." It urged that its stitching design is unique, consisting of "distinctive pocket stitching, which include[] smoothly curved lines of varying thickness and abrupt points ...." Right-On submitted several third party trademark registrations for stitching designs, as well as three of its own registrations, all on the Principal Register without a Section 2(f) showing.

The Board found it clear from the record that stitching designs on pockets is a "common practice in the relevant trade, the jeans market." "The crux of the dispute here is the legal meaning to be attributed to this practice." The PTO contended that this common practice supports the ornamentation refusals, while Applicant argued that it supports a finding that stitching is recognized as a trademark. The Board further observed that a "mere refinement" cannot be inherently distinctive.

"Considering applicant's pocket-stitching designs within these legal parameters, we find that they are not 'unique or unusual' but rather are in the category of a 'common basic shape or design' and are at most 'a mere refinement of a commonly-adopted and well-known form of ornamentation' for jeans. *** [T]he mirror image enhances the ornamental effect."

The Board noted the statement in the TMEP that "[a] small, neat and discrete word or design feature ... may be likely to create the impression of a trademark, whereas the larger rendition of the same matter emblazoned across the front of a garment ... may be likely to perceived merely as a decorative or ornamental feature of the goods." Here, Applicant's design is "rather more" the latter than the former.

The third-party registrations were of little help, since each case must be decided on its own merits. As to Applicant's own prior registrations, the Board noted that Section 66(a) applications may proceed to registration without the submission of a specimen of use, and this may have happened with Applicant's registrations, with the PTO "not being aware of the way the mark would be used or perceived." It is appropriate in such a case for the PTO to issue an ornamental refusal if the proposed mark is decorative or ornamental on its face.

The Board therefore found that the proposed marks constituted mere ornamentation and failed to function as trademarks.

TTABlog comment: Curiously, there was no discussion, or even mention, of the CAFC's decision in In re Slokevage, 78 USPQ2d 1395 (Fed. Cir. 2006) [TTABlogged here], in which a cut-out design on the rear of jeans was found to be product design trade dress that could not be inherently distinctive.


Text Copyright John L. Welch 2008.


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