Wednesday, November 03, 2010

TTAB Finds "LAGUNA" Logo on T-Shirt Merely Ornamental, Affirms Refusal

The Board affirmed a refusal to register the logo shown immediately below, for "clothing, namely, t-shirts, sweatshirts, tank tops and tops," under Sections 1, 2, and 45, finding it to be "primarily an ornamental feature of the goods" that "does not function as a trademark for the goods." In re LS&S Retail, Inc., Serial Nos. 77524535, 77525441, and 77525450 (September 30, 2010) [not precedential].

Before reaching the ornamentality issue, the Board first affirmed Section 2(d) refusals to register the mark LAGUNA SURF & SPORT in standard character and two design forms for various clothing items and related retail store services, finding the marks likely to cause confusion with five registered marks comprising the word LAGUNA in standard character and design form for various clothing items.

As to ornamentality, Examining Attorney Marlene D. Bell maintained that the proposed mark, as appearing on Applicant's specimen of use (depicted below) is merely decorative or ornamental. She pointed out that Applicant has “not proffered any evidence to support a Section 2(f) claim of acquired distinctiveness or a claim of secondary source."

Applicant asserted that "[m]ost consumers of [its] goods will recognize that Applicant owns and operates a retail store by the same name and therefore, will identify Applicant’s mark with the source of the goods.”

The Board pointed out that "[w]here ... an alleged mark serves as part of the aesthetic ornamentation of the goods, the size, location, dominance and significance of the alleged mark as applied to the goods are all factors which figure prominently in the determination of whether it also serves as an indication of origin."

Here, the size, location, and dominance of the design supports the Examining Attorney's position. Moreover, the words "Laguna Beach, California" appearing below the logo suggest that SURF AND SPORT activities are available at that location. "Overall, the impression of applicant’s proposed mark depicted in the specimen is not as a source indicator."

The Board also noted the absence of a "TM" symbol adjacent the mark, which is "some evidence" that the logo is not being used as a trademark.

Finally, there was no evidence that consumers recognize the proposed mark as a source identifier, or that it "identifies a secondary source in addition to being ornamental."

Ornamentation of 'a T-shirt can be of a special nature which … inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source. Thus, the name ‘New York University’ and an illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-Shirt, will also advise the purchaser that the university is the secondary source of that shirt.

The Board has previously stated that "arbitrary terms such as KODAK and DREFT have obvious source-indicating characteristics because they 'usually have no other perceived significance.'"

In this case, however, the Board could not say that the proposed mark "has other perceived significance," and the record did not indicate that it is an indicator of a secondary source like NEW YORK UNIVERSITY.

And so the Board affirmed that refusal as well.

Text Copyright John L. Welch 2010.


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