Wednesday, March 06, 2019

Finding a Bearded Skull Design Merely Ornamental for Clothing, TTAB Affirms Failure-to-Function Refusal

[This is a guest post written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Finding that the bearded skull design, below, fails to function as a trademark for various clothing items, the Board affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. The Board concluded that the bearded skull design is merely a decorative feature of Applicant’s clothing and does not function as a source identifier. In re Diesel Power Gear, LLC, Serial No. 87261073 (February 27, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).


Applicant Diesel Power sought to register the bearded skull design for vehicle accessories in International Classes 12 and 27 under Trademark Act Section 1(b), based upon Applicant’s claim of a bona fide intent to use the mark in commerce, and for various clothing items in International Class 25 under Trademark Act Section 1(a), based upon Applicant’s claim of use of the mark in commerce.


As to Class 25 only, based on Diesel Power’s use of the mark as depicted in the specimens of use, above, the Examining Attorney concluded that the bearded skull design is merely “an ornamental feature of Applicant’s clothing.” The Examining Attorney contended that “‘the proposed mark is prominently displayed on the front or as a part of a design across the front of t-shirts,’ and [thus] ‘is not likely to be perceived as a source indicator by consumers.’” Applicant responded that the mark indeed functions as a trademark because (1) “it is ‘distinctive and unique, and is not a well-known design,’” and (2) “‘consumers are familiar with the practices of the trade, in which a large version of a mark is frequently placed on a t-shirt as a source identifier.’”

Citing the Trademark Manual of Examining Procedure (“TMEP”) § 1202.03, the Board analyzed the following four factors that Examining Attorneys consider in analyzing whether ornamental features function as a trademark:
    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.

The Board underscored the weight of the first factor, noting that “the critical question . . . is the commercial impression [the mark] makes on the relevant public, i.e., whether the [mark] sought to be registered would be perceived as a mark identifying the source of the goods.” The Board considered the size, location, dominance and significance of the bearded skull design as it appeared on the t-shirts illustrated in the specimens, and concluded:

Nothing about the bearded skull design stands out from the other wording and elements on the specimens so as to be viewed as a source-identifier. Based on these specimens of use, the commercial impression engendered by the bearded skull design is not likely to be perceived as anything other than part of thematic whole of the ornamentation on Applicant’s t-shirts. There is no probative evidence of record that purchasers perceive the bearded skull design as a trademark.

As to the second factor, Diesel Power contended without support “that it ‘is well known, companies frequently place large versions of their mark on the front of a t-shirt, either as the only mark, or as a predominating feature in conjunction with other design features.” The Examining Attorney, citing TMEP §§ 1202.03 (a) and (b), maintained that “‘where consumers have been conditioned to recognize trademarks in a certain location, as on the breast area of a shirt, ornamental matter placed in a different location is less likely to be perceived as an indicator of source.’”

While the Board noted that “[t]here is no per se rule regarding the registrability based on the size or location of a mark on clothing,” it rejected Applicant’s argument and reiterated the importance of the commercial impression the mark makes on consumers: “[Because] the bearded skull design is emblazoned across the center of the t-shirt as an integral part a larger design that will be perceive [sic] as part of thematic whole of the ornamentation on Applicant’s t-shirts, it is not displayed in the manner in which consumers have been conditioned to recognize trademarks.”

As to the third factor, the Board looked to whether Applicant had submitted any evidence that the bearded skull design functions as an indicator of secondary source. Although Applicant sought to register the mark for vehicle accessories, it did so based upon an alleged bona fide intent to use the mark in connection with those goods, and the Board found no evidence that the design had been used or registered in connection with any other goods or services. The Board thus concluded that the mark as used on clothing failed to function as an indicator of secondary source.

As to the fourth and final factor, the Board reasoned that, despite the inherent distinctiveness of the applied-for mark, “because the commercial impression engendered by the bearded skull design is not likely to be perceived as anything other than part of thematic whole of the ornamentation on Applicant’s t-shirts, Applicant has failed to make trademark use of the design.”

And so, as to Class 25 only, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: WYHA?

Text Copyright John L. Welch 2019.

5 Comments:

At 10:33 AM, Anonymous Anonymous said...

Novice

 
At 1:23 PM, Anonymous NJ Keith said...

TTAB is sharpening up the "failure to function" tool for when they have to deal with the "N" word slogans.

 
At 1:26 PM, Anonymous Anonymous said...

Wouldn't it have been easier to amend to 1(b) and have some T-Shirts made with the mark on the tags, or come up with some other valid specimen? This isn't clearly a wrong call by the examiner. Why fight when there's an easy way around, unless you really need the filing date for some reason.

 
At 10:01 PM, Blogger Stephen Anderson said...

Why didn't they just submit adequate specimens in the first place? Smh.

 
At 10:04 PM, Anonymous Anonymous said...

Didn't applicant suffer a critical error by not filing 1(b) as to the class 25 goods, since upon filing SOUs for all the classes applicant could've pointed to secondary source?

 

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