IP Law Daily, TRADEMARK—TTAB: Refusal to register blue and white stripe design for Italian ices affirmed, (Jul 7, 2026)

By Linda O’Brien, J.D., LL.M.

For each of the classes of goods identified in the application of an Italian ice franchise to register a design of blue and white stripes, consumers would perceive the proposed mark as mere ornamentation.

The application of a New York Italian ice franchise to register a design comprised of parallel blue and white stripes for frozen confections, fruit drinks, alcoholic beverages, franchises, and restaurant services was properly refused because it was not inherently distinctive, the Trademark Trial and Appeal Board has determined in a precedential order. The evidence also demonstrated that the design lacked acquired distinctiveness. Thus, the refusal to register with respect to the application was affirmed (In re Ralph’s Famous Italian Ices Franchise Corp., No. 90302728 (T.T.A.B. Jun. 25, 2026)).

Ralph’s Famous Italian Ices Franchise Corp. (“Applicant”), a historic New York maker of frozen desserts, sought to register on the Principal Register a proposed mark for frozen beverages and confections and restaurant services. The description of the mark reflects that the mark would be used as trade dress and states: the mark consists of a repeating pattern of alternating blue and white vertical stripes; the repeating pattern appears on a portion of the surface of the goods, of the packaging for the goods, of the building facades, and on displays, marketing, and advertising materials; and the colors are claimed as features of the proposed mark. The application identifies the following goods and services: shakes, frozen drinks, and milk shakes in International Class 29; frozen confections, beverages made of coffee, frozen drinks, Italian ices, and non-alcoholic frappes in International Class 30; fruit drinks in International Class 32; alcoholic beverages except beer and hard seltzer in International Class 33; restaurant franchising featuring Italian ice, ice cream, and frozen drinks in International Class 35; and restaurant services featuring Italian ice, ice cream, and frozen drinks in International Class 43.

The examining attorney refused to register the proposed mark as it failed to function as a trademark and service mark as to all the identified classes of goods and services under Sections 1, 2, 3, and 45 of the Trademark Act because it constituted ornamental matter that was not inherently distinctive and the Applicant failed to prove its alternative claim of acquired distinctiveness. After the refusal was final, the Applicant appealed the refusal to register to the Trademark Trial and Appeal Board.

Inherent distinctiveness. The evidence showed that the ornamental design of the proposed mark comprising a repeating pattern of alternating vertical blue and white stripes was not inherently distinctive, the Board found. The question of whether product packaging trade dress qualifies as inherently distinctive requires an assessment of whether: (1) it was a common basic shape or design; (2) it was not unique or unusual in the particular field; (3) it was a mere refinement of a commonly-adopted and well known form of ornamentation for a particular class of goods viewed by the public as ornamentation for the goods; or (4) it was capable of creating a commercial impression distinct from any accompanying words.

Regarding the Applicant’s identified goods of shakes, frozen drinks, and milk shakes in Class 29, none of the specimens in the application showed the proposed trade dress on a container for such shakes and the use of the proposed stripes pattern appeared to be part of the décor of the Applicant’s retail location. The examining attorney presented examples of several ice cream companies that use repeating stripe patterns in connection with selling shakes and milk shakes and other companies who sell shakes and milk shakes that use vertical stripes of various other alternating colors. These stripes are a basic and common type of ornamentation used in connection with the sale of these goods.

As for the goods of frozen confections, coffee beverages, Italian ices and frozen drinks in Class 30, the examining attorney similarly provided examples from websites of several companies displaying photos of vendors and retail outlets that use repeating stripe patterns and stripe patterns of various alternating colors, many of equal width and proportion, in connection with such goods. The Applicant uses its ordinary and unremarkable stripes pattern in a customary way and, at most, the blue and white stripes are simply a refinement or variation of the common practice of using alternating-colored stripes in this field.

With respect to non-alcoholic fruit drinks in Class 34 and alcoholic beverages in Class 33, the record shows that several other companies use repeating blue and white or other alternating color stripes in connection with the sale of fruit drinks. Regarding restaurant services in Class 43 and restaurant franchising in Class 35, the record contained plentiful evidence of restaurants, including restaurants featuring Italian ice and ice cream products, using blue and white stripes as trade dress and several other restaurants that offer services using variation of vertical stripe patterns with various alternating colors. Stripes generally are a rudimentary form of ornamentation and the Applicant uses them in an unremarkable way. Thus, the evidence overwhelmingly showed that the proposed mark was not inherently distinctive, the Board stated.

Acquired distinctiveness. Ralph’s failed to prove its alternative claim that the proposed mark had acquired distinctiveness. Acquired distinctiveness may be proven by: (1) ownership of a prior registration of the same mark for similar goods and services; (2) a verified statement of substantially exclusive and continuous use of the mark in commerce for the preceding five years; and/or (3) other evidence showing duration, extent, and nature of the use in commerce and advertising expenditures. Here, the Applicant did not attempt to show ownership of a prior registration and did not supply a verified statement of exclusive and continuous use. The Applicant’s submission of some third-party news articles that did not mention or depict the claimed stripes trade dress and only one article depicted the Applicant’s business with a photo showing only the stripes trade dress with no other visible source identifiers. These articles do not show that consumers associate blue and white stripes as uniquely identifying the Applicant. Similarly, the Applicant’s argument that it spent “tens of thousands of dollars on marketing and advertising under the mark” was also deficient. On its face, the numbers were not large and there were no examples of advertising purchased with those expenditures. However, there was extensive evidence that the Applicant’s use of the proposed trade dress was not substantially exclusive as others in the relevant fields use blue and white stripes that are very similar and some identical to the Applicant’s blue and white stripe trade dress. The Applicant failed to rebut this evidence and therefore unable to prove its claim of acquired distinctiveness, the Board concluded.

The Case is Serial No. 90302728.

Judge: Casagrande, T.

Attorneys: David L. May (Nixon Peabody LLP) for Ralph’s Famous Italian Ices Franchise Corp. Hai-Ly Lam for the USPTO.

Companies: Ralph’s Famous Italian Ices Franchise Corp.

Cases: Trademark USPTO