Monday, September 26, 2016

Precedential No. 26: Finding a Repeating Pattern Not Distinctive, TTAB Affirms Failure To Function Refusal of Hookah Ornamentation

The Board affirmed a refusal to register the proposed mark shown below, consisting of a repeated diamond pattern applied to the lower third of the cylinder of "electronic hookahs," deeming it to be a non-distinctive, merely ornamental design that lacks acquired distinctiveness under Section 2(f). In re Fantasia Distribution, Inc., 120 USPQ2d 1137 (TTAB 2016) [precedential].

The Board noted that the refusal to register is consistent with TMEP Section 1202.19 (April 2016), incorporating a 2015 USPTO examination guide that addressed the potential lack of inherent distinctiveness of repeating patterns because they often serve an ornamental function. Analogous to color and product design, repeating patterns are often used to make products more attractive, and so consumers would not be predisposed to equate the pattern with source. The Board did not rule out the possibility that a repeating pattern could be inherently distinctive, but in most cases it would not be. "A pattern may function as a mark only 'if it is arbitrary and distinctive and its principal function is to identify and distinguish the source of the goods to which it is applied ....' See In re Soccer Sport Supply Co., 184 USPQ 345, 347 (CCPA 1975)."

Inherent Distinctiveness: To assess the inherent distinctiveness of the pattern, the Board followed Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 196 USPQ 289 (CCPA 1977), adapting its factors to the following:
  • the nature of Applicant's goods and whether there is an industry practice of ornamenting such goods;
  • the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone;
  • how common the pattern is, whether it is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common or well-known form of ornamentation;
  • the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and
  • whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.

Examining Attorney April Roach submitted evidence regarding three other brands of electronic hookahs that display patterns placed at one end of the device, in a manner similar to applicant's pattern, contending that this evidence demonstrated that such placement of ornamental designs is a common practice in the industry. The Board rejected applicant's contention that the evidence must show other diamond patterns, pointing out that even if applicant's is the first and only user of a diamond pattern, that fact alone "does not imbue the design with source-identifying significance, where Applicant's design merely repeats an ordinary shape in an unremarkable pattern and places it on the goods in an unremarkable way."

Applicant's basic diamond pattern blends with other elements of the trade dress and does not make a distinct commercial impression. It appears in a location often used for ornamentation in this industry.

The Board concluded that applicant's repeating diamond pattern is not inherently distinctive. It "plays a significant role in giving the devices an attractive appearance," and consumers would not be predisposed to view the pattern as source-indicating.

Acquired Distinctiveness: Of course, an ornamental element may be registrable as a trademark on the Principal Register upon proof of acquired distinctiveness. The Board found, however, that applicant's proofs fell short. There was no evidence of "look for" advertising, and the handful of Internet references to applicant's diamond pattern did not indicate its significance. The evidence showed that applicant's are sold in packaging that hides the diamond pattern from view. Moreover, the wording and pattern color signify the flavor of the hookah, and thus the diamond pattern blends with the other elements of trade dress rather than standing out on its own.

The Board therefore concluded that the proposed mark lacks acquired distinctiveness.

And so the Board affirmed the refusal to register under section 1, 2, and 45 of the Trademark Act.

Read comments and post your comment here.

TTABlog comment: It seems to me that if ornamentation at the lower end of the hookah is common in the industry, this may indeed be a way of distinguishing source.

Maybe applicant should try to register this at the U.S. Pattern and Non-Trademark Office.

Text Copyright John L. Welch 2016.


At 10:12 AM, Anonymous Anonymous said...

I find that the Board's reasoning in distinguishing between "mere ornamenatation" on the one hand and inherently distinctive on the other, to be arbitrary at best. One might call it a "checkered past".

From the old Burgess battery case, to the Swift case, to Esso's successful appeal before the CCPA, once a design has been characterized as "mere ornamentation" by the Examiner, you have a hill to climb. The discussion among the panel in the Esso case is emblematic.

One might surmise that if your design is comprised of common geometric elements, you will always lose. Maybe, but maybe not. Are colored stripes or bands more inherently distinctive than a pattern including an array of geometric elements? Why?

At 10:16 AM, Blogger Gene Bolmarcich, Esq. said...

You made a great point...I've been trying to figure out for many years whether evidence of common usage of a certain "device" (e.g. pocket stitching on jeans pockets) is evidence for or against consumer recognition as a trademark. I think the answer is that it can only help an applicant but should not ever be used against her. It predisposes one to thinking something MIGHT be a mark (so you're over the "functions as" hurdle) but then its up to the mark itself to tip the scales (distinctiveness). Just because a "device" is sometimes (or even always, if that can even be proven as a fact) used ornamentally, doesn't mean THIS device can't be inherently distinctive. Flowers on a box of tissues is ornamental. Perhaps black and white photos of famous bridges isn't.

At 10:19 AM, Blogger Gene Bolmarcich, Esq. said...

Is there no room for reality at the USPTO?? If I saw this design on a competing product of course I'd think it was related and thus I'd be confused (and I'm not easily confused)

At 11:08 AM, Blogger Gene Bolmarcich, Esq. said...

I didn't look at the evidence but if it shows CONSISTENT use of ornamentation in a particular location then that is evidence that it functions as a mark. If the evidence is that a single producer uses many different designs in a single location then it's probably ornamentation and would be seen that way. But as always, it's very theoretical because such knowledge of "single source" by a consumer requires the use of house marks to designate the single source, so maybe the rule is that a single ornamentation (and no other) used consistently, can be a trademark if the evidence shows it is always used with the house mark.

At 11:59 AM, Blogger John L. Welch said...

A long time ago, I wrote this:

In In re Chun Kee Steel & Wire Rope Co., S.N. 75510018 (Sept. 20, 2002)[not citable], the Board deemed a two-color combination mark for wire rope (red and green)
to be registrable on the basis of acquired distinctiveness. The Board concluded that customers would not immediately recognize Applicant’s color scheme as a trademark, and so it found the mark to be not inherently distinctive. However, in view of the evidence that consumers of wire rope are aware that color combinations may be used as trademarks, the Board found sufficient Applicant’s less than overwhelming Section 2(f) evidence: some $1.8 million in sales since 1993, reference to the color combination on invoices for the goods, and declarations from two customers.


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