IP Law Daily, TRADEMARK—TTAB: Design consisting of symmetric symbol fails to function as a trademark for jewelry and clothing, (Oct 31, 2024)

By Karen Servidea, J.D.

Consumers likely would perceive the proposed mark as mere ornamentation, rather than as an indicator of source.

Given the size, location, and dominance of a proposed mark on jewelry and clothing, consumers likely would view the mark as mere ornamentation, the Trademark Trial and Appeal Board has determined. Thus, the Board held that the mark fails to function as a trademark and upheld the refusal to register it (In re Dragonsteel Entertainment, L.L.C. , No. 97200167 (T.T.A.B. Oct. 29, 2024)).

Applicant Dragonsteel Entertainment, L.L.C. sought registration on the Principal Register of a mark, described as a symmetric glyph (or symbolic figure) comprising various elements, including an “arrow-like design,” for “jewelry,” in International Class 14, and “Clothing, namely, t-shirts, socks, hoodies,” in International Class 25. The Examining Agent refused registration under Trademark Act Sections 1, 2, and 45 (15 U.S.C. §§ 1051, 1042, 1127), on the basis that the proposed mark, as used in the specimens of record, is merely a decorative or ornamental feature of the identified goods and thus does not function as a trademark to indicate the source of the company’s goods and to distinguish them from those of others. The company appealed.

Mere ornamentation. The Board explained that matter that does not operate to indicate the source or origin of the identified goods and distinguish them from those of others does not meet the statutory definition of a trademark and, thus, may not be registered. “[O]ne reason a proposed mark may fail to function as a trademark is that it would be perceived as mere ornamentation for the goods it is applied to and thus does not serve to indicate the source of the goods,” the Board stated. Thus, the critical question was whether the proposed mark would be perceived as a mark identifying the source of the goods by potential purchasers of jewelry, t-shirts, socks, and hoodies.

The Board first considered the specimens in the record, including images of jewelry, a hoodie, a t-shirt, and socks. The Examining Attorney argued that the specimens show the proposed mark “prominently engraved into the front portions of pendants and earrings, in a large size that occupies almost all of their visible exteriors” and “prominently featured on the front portions of t-shirts and sweatshirts, in a large size that occupies the majority of the shirts’ exterior.” Thus, the Examining Agent urged, the proposed mark serves as the “sole decorative element” of the jewelry and the shirts. The company countered by noting that the Board has made it clear that “emblazoning” a logo on the front of a t-shirt does not preclude the logo from functioning to identify a source in the minds of consumers.

The Board agreed that it has declined to adopt a per se rule on registrability based on the size of a mark on clothing. Instead, in considering the commercial impression of marks, the size of the mark is one consideration along with others, and registrability must be determined on a case-by-case basis, the Board explained. In this case, the Board found that the size, as well as the location and dominance, of the proposed mark on the goods made it more likely than not that consumers would view it as mere ornamentation, rather than as an indicator of source. In particular, the Board noted that in all of the specimens except the one displaying socks the proposed mark “is the only design element on the goods” and “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 Board found that “the proposed mark wholly defines the appearance of the jewelry and forms the essence of the shirts’ expressive element.”

In regard to the socks, the Board found that the poor image quality of the specimen prevented it from deciding whether the proposed mark actually appears on the socks and thus whether the specimen shows merely ornamental use of the proposed mark.

Marketplace evidence. The Board also considered whether marketplace evidence showed that the relevant goods commonly feature decorative elements or that the proposed mark’s design is a mere refinement of a common form of ornamentation. In that regard, the Examining Attorney pointed to examples in the record of arrow designs on clothing, as well as examples in the record of various pieces of jewelry. The Board rejected the Examining Attorney’s contention that any of the examples featured designs similar to the proposed mark. Nevertheless, it agreed that the evidence was relevant because it supported the general proposition that clothing and jewelry commonly feature prominently displayed ornamentation or design elements. Accordingly, the Board found that the manner in which the company applied the proposed mark to shirts and jewelry is a mere refinement of a common form of ornamentation of such goods.

Secondary source. The Board acknowledged that some of the marketplace examples in the record appear to show ornamental designs that may also serve as indicators of secondary source. In other words, “the ornamental designs in these examples may be recognized as trademarks, or as including trademarks, because of the relevant mark owner’s non-ornamental use of the relevant matter on other goods or services,” it explained. Still, the Board considered the evidence as supporting the general proposition that clothing and jewelry typically feature ornamentation and are bought for that reason.

On a related note, the company asserted that the proposed mark “is not random artwork but is instead a distinctive symbol for fans” of a particular writer’s fantasy books. The Board considered that argument to be based on a secondary source concept insofar as the company was suggesting that consumers familiar with the books will recognize the proposed mark as pointing to the source of the books. The company did not actually claim or provide any evidence of secondary source or any evidence establishing its relationship to the author or the books, however. Thus, the Board was unable to conclude that consumers will view the proposed mark as an indicator of secondary source.

Accordingly, the Board affirmed the refusal to register the proposed mark.

The Case is Serial No. 97200167.

Judge: Lavache, R.

Attorneys: Joseph Shapiro (Shapiro IP Law) for Dragonsteel Entertainment, L.L.C. Tasha Pulvermacher for the USPTO.

Companies: Dragonsteel Entertainment, L.L.C.

Cases: Trademark USPTO