Thursday, March 03, 2011

Test Your TTAB Judge-Ability on This "Fur Rondy" Jewelry Design

This Applicant sought to register the design shown below for "jewelry, namely, pins, lapel pins and pendant pins." The mark was originally described as a "pin consisting of eskimo (sic) with red snowsuit and peach face, yellow circle, and blue flag with yellow stars." The Examining Attorney refused registration on two grounds: the specimen of use was in black and white, not color, and the proposed mark is merely ornamental and fails to function as a trademark. How would you rule? In re Greater Anchorage, Inc., Serial No. 77561929 (February 14, 2011) [not precedential].

Specimen of Use: Because color was claimed as a feature of the mark, Applicant was required to submit a specimen showing use of the colors. Applicant's specimens of use were in black-and white. Not good enough, said the Board.

Failure to Function: Whether a design is merely ornamental or functions as a trademark depends on the perception of the consumer. "If customers perceive a design as not only attractive, but as an indicator of source, then it is a trademark."

Here, applicant’s proposed mark is the entire product itself; the pins and pendants shown in the specimen of record are in the form of three-dimensional embodiments of the mark. The impression likely to govern a prospective purchaser is that the design is a piece of artwork that may be worn as a symbol of attendance at applicant's “Fur Rondy” festival or as a way of showing allegiance to the event, and not as a trademark designating goods which emanate solely from applicant. See International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 208 USPQ 718 (9th Cir. 1980), cert. denied, 452 U.S. 941, 69 L.Ed. 2d 956, 101 S.Ct. 3086, 213 USPQ 1056 (1981) (jewelry purchased “for its intrinsic functional use and aesthetic appeal”).

Applicant provided no evidence that its Fur Rondy design has been used on other goods or services, or has been promoted as a trademark for jewelry. Nor does Applicant have a registration for the design "such that the distinctiveness of the design carries over to applicant's use on jewelry as a secondary source indicator."

And so the Board affirmed both refusals to register.

Fur Rondy 2010

TTABlog comment: For a very recent "aesthetic functionality" ruling, see the 9th Circuit's BETTY BOOP decision in Fleischer Studios, Inc. v. A.V.E.L.A. Inc. et al. (9th Cir. February 23, 2011), a copy of which may be found here. The court ruled that Fleischer's infringement claim involving the sale of Betty Boop dolls, t-shirts, and handbags was barred by Job's Daughters and by the Supreme Court's ruling in Dastar.

Text Copyright John L. Welch 2011.


At 8:31 AM, Blogger Pamela Chestek said...

Wow, what is it with Job's Daughters lately?? If I have a fan affiliation mark, I'm getting a little worried right about now.

At 6:13 PM, Anonymous Anonymous said...

This could have been so easy to fix before appeal. The specimen could have been in color but they just used a B&W photocopy instead of a screen shot of web page.

I don't get it, you spend all the money on an appeal rather than simply fixing the problem or just refiling with proper specimen and design? Why?

I also see this was for a one time pin from 2009 and the pins change each year. So, this is one where there is no chance I would have wasted time on an appeal here. And it was not even necessary!


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