IP Law Daily, TRADEMARK—TTAB: Refusal to register sunflower lapel pin mark for trademark legal services upheld, (Oct 2, 2024)

By Linda O’Brien, J.D., LL.M.

Consumers are predisposed to view sunflower lapel pins as ornamental accessories and less likely to perceive the pins as indicators of source for legal services.

The refusal of the application of a trademark law firm to register the proposed mark consisting of a sunflower lapel pin clothing feature for its legal and related entertainment and educational services on the basis that it failed to function as a service mark as it was nondistinctive trade dress has been upheld by the Trademark Trial and Appeal Board in a nonprecedential order. In addition, the firm did not establish that the mark had acquired distinctiveness for its services. Thus, the refusal to register with respect to the application was affirmed (In re Erik M. Pelton & Associates, PLLC, No. 97325462 (T.T.A.B. Sept. 26, 2024)).

Erik M. Pelton & Associates, PLLC (“Applicant”) is a Virginia law firm that provides legal advisory services regarding trademark registration, disputes, and infringement, and related entertainment and educational services. The Applicant sought to register on the Principal Register the proposed mark consisting of 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 were not part of the mark but showed the placement of the sunflower uniform feature on a suit lapel. The identified services were “Entertainment services, namely, providing podcasts in the field of intellectual property law; Providing continuing legal education courses; Providing online non-downloadable videos in the field of intellectual property law, in International Class 41. Legal advisory services in the field on trademarks, trademark maintenance, trademark registrations, trademark clearance, trademark infringement, prosecution of trademark applications, in International Class 45.”

The examining attorney refused to register the proposed mark under Sections 1, 2, 3, and 45 of the Trademark Act on the ground that, as used on the specimens of use, the mark did not function as a service mark for the Applicant’s services and did not acquire distinctiveness. After the refusal was made final, the Applicant appealed to the Trademark Trial and Appeal Board.

Nature of the proposed mark. The proposed mark failed to function as a service mark as it was nondistinctive trade dress, the Board found. Consistent with the Trademark Act definition of a service mark, “which includes not just any work or name, but also any symbol or device used to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if the source is unknown,” the proposed non-traditional service mark was a “symbol” or “device” which was intended to be used as trade dress for the Applicant’s services. The Board agreed with the Applicant’s assertion that its mark fell under the “tertium quid” category. Because the lapel pin depicted in the mark drawing was not a product offered by the Applicant, the mark was not product design trade dress. Similarly, the mark was not the packaging or dressing for goods and could not be traditional product packaging trade dress. However, since the Applicant sought registration under Section 2(f), the proposed mark’s lack of inherent distinctiveness was deemed established. Accordingly, the proposed mark was trade dress that did not, by its intrinsic nature, serve to identify a particular source for the Applicant’s identified services.

Acquired distinctiveness. The Applicant did not establish that the proposed mark had acquired distinctiveness for the Applicant’s services. The Applicant’s argument that it was uncommon for attorneys to wear lapel pins, specifically sunflower lapel pins, to promote and indicate the source of their legal services and it was more likely that consumers would view the proposed mark as a unique source identifier was rejected. Due to the manner in which lapel pins are commonly used, consumers are predisposed to view lapel views as ornamental accessories and are less likely to perceive them as indicators of source for legal services and related entertainment and educational services.

The Applicant presented evidence showing the manner and extent of its advertising efforts, which included the Applicant’s attorney employees wearing the sunflower pin either while advertising the firm’s services on its website or in excerpts from courses or presentations. While the evidence as a whole demonstrated some effort by the Applicant to use the proposed mark as a service mark, “the ultimate test in determining whether a designation has acquired distinctiveness is Applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source.” However, the record did not include evidence, such as customer surveys or declarations, sales figures, conference attendance estimates, website traffic, course participation, or podcast listenership attesting to or indicating an association of the proposed mark with the Applicant as the source of its services, which would help discern the scale or impact of the Applicant’s efforts in educating the relevant public about its proposed mark.

Almost all of the Applicant’s submitted evidence, including the social media efforts, merely showed the Applicant’s attorneys wearing a sunflower lapel pin without any attempt to draw consumers’ attention to it as an indicator of source. The Applicant’s efforts to associate its services with the sunflower by using the sunflower motif on its website and business cards, and by distributing sunflower seeds to colleagues, clients, and prospective clients were acknowledged. However, the Applicant did not provide any specific data to gauge the potential impact on those efforts to create as association between the proposed mark and the Applicant’s legal and related entertainment and education services, the Board concluded.

The Case is Serial No. 97325462.

Judge: Lavache, R.

Attorneys: Denisse F. Garcia (Erik M. Pelton & Associates, PLLC) for Erik M. Pelton & Associates, PLLC. Kelly Ryan for the USPTO.

Companies: Erik M. Pelton & Associates, PLLC

Cases: Trademark USPTO