"Sunflower in Lapel" for Legal Services Lacks Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register the mark shown below, for providing podcasts, CLE, and on-line videos in the field of intellectual property law, and for legal advisory services in the field of trademark law, on the ground that the proposed mark "fails to function as a service mark because it is nondistinctive trade dress and Applicant has not established that it has acquired distinctiveness for Applicant’s services." In re Erik M. Pelton & Associates, PLLC, Serial No. 97325462 (September 26, 2024) [not precedential] (Opinion by Judge Robert Lavache).

Applicant's mark comprises "a sunflower lapel pin uniform feature, with yellow petals forming the outside of the sunflower and a brown center outlined in black; the dotted lines in the image are not part of the mark but to show placement of the sunflower uniform feature on a suit lapel."

Applicant asserted that its proposed mark falls under the “tertium quid" rubric, and the Board agreed: the lapel pin is not applicant's product Applicant, nor is it packaging or "dressing" for goods. Therefore, "the proposed mark is best characterized as trade dress akin to product packaging for services."

The Board noted that product packaging trade dress and trade dress for services can be inherently distinctive, but here inherent distinctiveness was not at issue because Applicant sought registration under Section 2(f). Consequently, "the proposed mark’s lack of inherent distinctiveness is deemed an established fact."

Applicant faced a "heavy burden because the mark consists of a lapel pin, and the evidence of record shows what may generally be taken for granted: lapel pins, including those featuring are common accessories for professional attire in many fields, including the legal industry."

Because of the manner in which lapel pins are commonly used, consumers are predisposed to view lapel pins as ornamental accessories, so they are less likely to perceive them (particularly those featuring typically decorative elements like flowers) as indicators of source for legal services and related entertainment and educational services.

Applicant pointed to its use of the mark for at least five years, website photos, social media posts, photographs of attorneys wearing the pin, and several other items. The Board observed that "where the proposed mark is not inherently distinctive because it is comprised of common features in the relevant field or is typically used or perceived as ornamentation, length of use alone generally is not sufficient to satisfy the elevated burden of proving acquired distinctiveness."

The Board acknowledged that applicant has made some effort to use the proposed mark as a service mark, including some "look for advertising" and inclusion of the sunflower motif on business cards and applicant's website. However, the evidence fell short of satisfying applicant’s heavy burden in establishing that its proposed mark has acquired distinctiveness.

Here, we have little information to enable us to discern the scale or impact, and thus the success, of Applicant’s efforts in educating the relevant public about its proposed mark For instance , the record does not include any customer surveys or declarations from actual purchasers attesting to their association of Applicant's proposed mark with Applicant as the source of its services any specific evidence of sales figures or numbers of clients any conference attendance estimates indicating how many people may have encountered the proposed mark; any indication of the geographic reach of Applicant’s activities; or any data relating to Applicant’s website traffic, course participation or podcast listenership.

The information provided by the applicant suggested that the exposure of the proposed mark to relevant consumers as been limited, and therefore the Board affirmed the refusal to register due to lack of acquired distinctiveness.

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TTABlogger comment: I sympathize with Erik. I tried to grow sunflowers this summer and they failed to acquire distinctiveness.

Text Copyright John L. Welch 2024.