Ornamental Design on Jewelry and Clothing Fails to Function as a Trademark, Says TTAB

The Board upheld a refusal to register the design mark shown below, for jewelry and for "Clothing, namely, t-shirts, socks, hoodies" on the ground that under Sections 1, 2 and 45 of the Trademark Act, the proposed mark, as used on the specimens of record, is merely a decorative or ornamental feature of the goods and does not function as a trademark to indicate their source. In re Dragonsteel Entertainment, L.L.C., Serial No. 97200167 (October 29, 2024) [not precedential] (Opinion by Judge Robert Lavache).

The question was whether consumers would view the design as mere ornamentation on the goods or as a source indicator for the goods. In such a case, the Board has found it "helpful to consider various aspects of designs and shapes," including "the size, location and dominance of the designs." In that light, it reviewed applicant's specimens of use:

Applicant argued that “[t]he TTAB has made it clear that ‘emblazoning’ a logo on the front of a t shirt or hoodie does not preclude the logo functioning as a source identifier in the minds of the consuming public.'" The Board agreed: "we have previously rejected any per se rule regarding registrability based on the size of a mark on clothing." However, that didn't help the applicant:

In this case, we find that the size, as well as the location and dominance, of the proposed mark on the goods make it more likely than not that consumers viewing the mark will perceive it as mere ornamentation, rather than as an indicator of source. Specifically, in all of the specimens . . . except the one displaying the socks, the proposed mark is the only design element on the goods and it is displayed on the front of goods taking up a significant portion of the shirts’ surface area and composing almost the entirety of the jewelry items. Thus, the proposed mark wholly defines the appearance of the jewelry and forms the essence of the shirts’ expressive element.

As to the socks, the Board agreed with the Examining Attorney Tasha Pulvermacher that the poor image quality of the specimen prevented a determination as to whether the proposed mark actually appears on the socks, and so the Board could not determine whether the specimen shows merely ornamental use.

The Board also considered marketplace evidence that jewelry and clothing commonly feature prominently displayed ornamentation or design elements. [Hardly surprising - ed.] "Thus consumers may be predisposed to perceiving such elements as something other than indicators of source on such goods and may purchase the goods because of their appearance rather than because they come from a particular source."

So, while the design of the proposed mark may be deemed unique as compared to the other designs in evidence, the manner in which Applicant applies the proposed mark to shirts and jewelry (i.e., a prominently displayed design serving as the sole decorative of the goods) is nonetheless a mere refinement of a common form of ornamentation for such goods.

And so, the Board affirmed the refusal.

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TTABlogger comment: Applicant made no attempt to show acquired distinctiveness. It did make a feeble attempt at what the Board construed as a "secondary source" argument (the primary source being the books of Brandon Sanderson) but offered no proof to support it.

Text Copyright John L. Welch 2024.