Lululemon Athletica Canada Inc.

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed:

January 11, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re Lululemon Athletica Canada Inc.

________

Serial No. 77455710

_______

Ann K. Ford, Thomas E. Zutic and David M. Kramer of DLA

Piper LLP, for Lululemon Athletica Canada.

Ellen J.G. Perkins, Trademark Examining Attorney, Law Office

110 (Chris A.F. Pedersen, Managing Attorney).

_______

Before Seeherman, Ritchie, and Wolfson, Administrative

Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Lululemon Athletica Canada Inc., applicant herein

(“applicant”), seeks registration on the Principal Register

of the design shown below for “hooded sweat shirts; jackets;

coats,” in International Class 25:1

1

Serial No. 77455710, filed on April 23, 2008.

Ser. No. 77455710

The description states: The mark consists of a single line

in a wave design that is applied to the front of a garment.

The dotted lies [sic] showing the outline of a garment does

not form part of the mark, but is used only to show

placement of the mark.

The trademark examining attorney refused registration

pursuant to Trademark Act Sections 1, 2, and 45, 15 U.S.C.

§§ 1051, 1052, and 1127, on the ground that applicant’s

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Ser. No. 77455710

design is merely ornamental as applied to the goods being

offered. The application was originally filed pursuant to

Section 1(a), and claiming a priority filing date under

Section 44(d). On May 11, 2010, after receiving a final

refusal, applicant responded by, among other things,

amending the filing basis to rely instead on Sections 1(b)

and 44(e). Applicant did not amend the application to

submit a claim, either directly or in the alternative, that

the design has acquired distinctiveness and is registrable

under section 2(f). The examining attorney issued a

subsequent final Office action continuing the refusal.

Applicant made a timely appeal of the refusal. Both

applicant and the examining attorney filed briefs.

ORNAMENTATION

This case presents the question of whether the public

would perceive the wave design as an indicator of source

(i.e., a trademark) or, instead, merely as a form of

decoration or ornamentation. Absent a showing that

ornamental or decorative matter is inherently distinctive or

has acquired distinctiveness as to the goods in the

application, there is another way that an applicant can show

that such matter serves as a trademark: by showing that the

applicant has used or registered the design in a non-

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Ser. No. 77455710

ornamental manner for other goods or services, see TMEP §

1202.03(c) (October 2012).

Inherent Distinctiveness

“An ornamental design can be inherently distinctive if

it is arbitrary and distinctive and if its principal

function is to identify and distinguish the source of the

goods to which it is applied, ornamentation being merely

incidental. However, a design which is a mere refinement of

a commonly-adopted and well-known form of ornamentation for

a class of goods would presumably be viewed by the public as

a dress or ornamentation for the goods.” In re Soccer Sport

Supply Co., 507 F.2d 1400, 184 USPQ 345, 347 (CCPA 1975)

(citations omitted); see also, In re Chippendales USA, Inc.,

622 F.3d 1346, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010) (“cuffs

and collar” costume of male exotic dancers was mere

refinement of a form of ornamentation in exotic dancing

industry); and Seabrook Foods, Inc. v. Bar-Well Foods Ltd.,

568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) (applying the

relevant factors to a design feature of a mark).

In considering whether matter is ornamental, or whether

it inherently functions as a mark, relevant considerations

include the commercial impression made by the design, the

relevant practices of the trade, and evidence of

distinctiveness, if applicable. See, e.g., Chippendales, 96

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Ser. No. 77455710

USPQ2d at 1687-88 (citing potentially relevant factors in

determining whether a costume design mark is inherently

distinctive); Soccer Sport Supply, 184 USPQ at 347 (where

competitors use similar pentagonal panels on soccer balls as

ornamentation, applicant’s use of such panels was not

inherently distinctive); In re Gen’l Tire & Rubber Co., 404

F.2d 1396, 160 USPQ 415, 417 (CCPA 1969) (white stripes are

so common on the sidewalls of tires that the general public

will likely view the claimed three concentric stripes “as

just a refinement of this general ornamental concept, rather

than as a trademark”); In re Burgess Battery Co., 112 F.2d

820, 46 USPQ 39, 40 (CCPA 1940) (the consuming public will

likely view alternating, repeating stripes on batteries to

be ornamentation and not an indicator of source); cf. In re

Swift & Co., 223 F.2d 950, 106 USPQ 286, 289 (CCPA 1955)

(although polka dots are a common form of ornamentation,

polka-dotted banding on spray can for a cleaning product was

inherently distinctive and distinctly pointed to the origin

of the product); see also TMEP § 1202.03; J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition,

§7:24 (4th ed. 2012).

Applicant argues that the design is not merely

ornamental because (1) the commercial impression is of a

distinctive design; and (2) use by competitors of similarly

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Ser. No. 77455710

large marks on their clothing shows that consumers would

perceive applicant’s design as being a mark rather than as

merely ornamental.

The examining attorney, on the other hand, argues that

the design is not inherently distinctive and instead is

merely ornamental because (1) due to its large size,

consumers will not perceive it as a mark when used on the

“hooded sweat shirts; jackets; coats” for which applicant

seeks registration; and (2) third-party registrations show

that similar shapes and designs are registered on the

Supplemental Register or with a claim of acquired

distinctiveness under Section 2(f).2

In determining whether a design is inherently

distinctive or merely ornamental, we have found it helpful

to consider various aspects of designs and shapes, stating

repeatedly, “we must consider the size, location and

dominance of the designs in determining the commercial

impression of designs.” In re Right-On Co. Ltd., 87 USPQ2d

1152, 1156 (TTAB 2008) (finding pocket stitching that spans

both back pockets of jeans to be merely ornamental), citing

In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988)

2

The parties did not raise the issue of whether the applied-for

mark qualifies as product design or trade dress. Wal-Mart Stores,

Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000);

In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006).

Accordingly, we decline to address that issue.

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Ser. No. 77455710

(finding applied-for matter consisting of large size

message and design suggestive of ornamentation).

The Board has found various shape designs to be

inherently distinctive and not ornamental. Some examples

include the following:

for “electrical toasters, coffeemakers, water kettles and

tea brewers.” In re Sunbeam Corp., 120 USPQ 304 (TTAB

1959);

for “a flavoring syrup, a frozen confection, a fruit or

syrup topping for ice cream and ice milk, and for flavor

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Ser. No. 77455710

ingredients for the making of ice cream or ice milk mixes.”

In re Dairy Queen of Georgia, Inc., 134 USPQ 136 (TTAB

1962); see also Vuitton et Fils, S.A. v. J. Young

Enterprises, Inc., 644 F.2d 769, 210 USPQ 351, 357 (9th Cir

1981), finding

“dark brown, vinyl-impregnated canvas,

bearing an arrangement of the initials ‘LV’

superimposed one upon the other and

surrounded by three floral symbols. The

design is in a contrasting mustard color”

to be “distinctive” for “luggage and handbags.”

In the present case, the examining attorney’s main

concern with the design in the application appears to be its

size. In this regard, the examining attorney submitted

evidence of third-party registrations showing marks covering

large areas of clothing that were either registered on the

Supplemental Register or were registered with a showing of

Section 2(f) acquired distinctiveness. Among these, the

most relevant are the following registrations on the

Supplemental Register:

Registration No. 2037960 describing “pleat of

fabric which runs from the shoulder to the cuff on

each sleeve” for “shirts”;

Registration No. 3403886 describing “pocket, horse

shoe shaped on the bottom and flat across the top”

for, among other things, “jackets”;

and the following on the Principal Register with a Section

2(f) claim of acquired distinctiveness:

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Ser. No. 77455710

Registration No. 2980286 describing “shape of the

seam which extnds [sic] vertically from either

side of the collar along the front of the garment

and then curiving [sic] horizontally to the lower

side seam of the garment in a distinctive “J”

shape” for “cardigan sweaters.”

Applicant, on the other hand, has submitted evidence

of third-party use of marks displayed in large size, to show

that consumers would perceive such a design as not merely

ornamental. Examples include the following:

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Ser. No. 77455710

It may have once been the practice in the clothing

industry to limit logos to small sizes in discrete areas

rather than to have them “emblazoned” across a garment.

See discussion in TMEP § 1202.03(a). Based on the evidence

reproduced above, however, we find that such is no longer

the industry practice, or at least no longer the only one.

Cf. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031,

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Ser. No. 77455710

1038 (TTAB 2010) (recognizing that the Board must adapt its

rules to changes in technology). Accordingly, we reject a

per se rule regarding registrability based on the size of a

mark on clothing. Rather, in considering the commercial

impression of marks of this nature, the size of the mark is

one consideration along with others, and the registrability

of each mark must be determined on a case-by-case basis.

See, e.g., CITC Industries, Inc. v. Levi Strauss & Co., 216

USPQ 512 (TTAB 1982)(“We are not saying that a symbol or a

design covering the surface of a product cannot perform a

trademark function or that it somehow loses its origin-

indicating property when it is so used”); citing Vuitton et

Fils S.A. v. J. Young Enterprises, Inc., 210 USPQ at 357.

In this case, nonetheless, we find that applicant’s

wave design is rather simple and looks like piping, which,

unlike the highly stylized marks depicted above, is likely

to be perceived by the public merely as ornamental.3

Accordingly, the overriding commercial impression of this

large-size applied-for design is that of ornamentation.

3

“Piping” is a decorative line across a garment. See relevant

definition in American Heritage of the English Language (4th ed.

2010) “a pipelike fold of material with which edges or seams are

trimmed.” The Board may take judicial notice of dictionary

definitions. University of Notre Dame du Lac v. J.C. Gourmet

Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d

1372, 217 USPQ 505 (Fed. Cir. 1983).

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Ser. No. 77455710

Secondary Source

Not every ornamental design will be considered merely

ornamental if it is also recognizable as a trademark. As

we have previously explained:

It is a matter of common knowledge that T-

shirts are “ornamented” with various insignia

... or ... various sayings such as “Swallow

Your Leader.” In that sense what is sought to

be registered could be construed to be

ornamental. If such ornamentation is without

any meaning other than as mere ornamentation it

is apparent that the ornamentation could not

and would not serve as an indicia of source.

Thus, to use our own example, “Swallow Your

Leader” probably would not be considered as an

indication of source

The ‘ornamentation’ of a T-shirt can be of a

special nature which inherently tells the

purchasing public the source of the T-shirt,

not the source of manufacture but the secondary

source. Thus, the name ‘New York University’

and an illustration of the Hall of Fame, albeit

it will serve as ornamentation on a T-shirt

will also advise the purchaser that the

university is the secondary source of that

shirt.

In re Olin Corp., 181 USPQ 182, 182 (1973) (quoted in TMEP

§ 1202.03(c) (referring to such wording or designs as

indicating a “secondary source”)).4 Applicant also argues

4

The terminology “secondary source” should not be confused with

the synonym for acquired distinctiveness, “secondary meaning.”

In the context of an ornamentation refusal, “secondary source”

simply means that the use of the design or words would be

perceived by the consumer as an indicator of source due to the

applicant’s prior use or registration of the mark for other goods

or services (not the applied-for goods). The TMEP gives examples

such as the names of colleges (known for educational services),

or a design mark used in connection with skis, emblazoned on

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Ser. No. 77455710

that it has used the same mark as the applied-for mark on

related goods and services, thereby showing that consumers

will perceive it as a trademark here.5 Applicant’s evidence

includes images of use on a storefront, Christmas ball

ornaments, a shopping bag, a luggage bag, a gift card, a

wool cap, a jacket, a bamboo yoga brick, a dense foam

brick, a yoga mat, a skidless towel, hairbands, a running

cap, and a headband. Some examples of applicant’s prior

use are set forth in the following images:

shirts or sweatshirts. See TMEP § 1202.03(c), citing In re Olin

Corp., 181 USPQ 182. In both cases, the consumer would

understand the mark on clothing to refer to the applicant’s

previously established mark for other goods or services. In

contrast, “secondary meaning” concerns whether matter that is not

inherently distinctive has, through substantially exclusive use

on the goods in question, been transformed, in the eyes of

consumers, into a source indicator.

5

Applicant originally filed specimens of use, but, as previously

noted, then changed the basis of its application to intent-to-

use and Section 44(e), and did not later provide context for the

specimens.

13

The examining attorney asserts that applicant’s

argument that its design is distinctive due to its use on

and registration for other products is not persuasive

because these other uses and registrations are not for the

same mark.

Ser. No. 77455710

We agree with the examining attorney. We note that

the evidence submitted by applicant of prior use on related

goods and services shows a highly stylized wave design

confined in and highlighted by a contrasting-hued circle,

as shown in applicant’s prior registration (shown below)

for “clothing, namely, pants, shirts, t-shirts, shorts,

sweatshirts, sweatpants, socks, jackets, coats, hats,” in

International Class 25, which was also submitted, and

relied upon, by applicant:6

Besides being highlighted by a contrasting circle,

applicant’s prior uses and registration clearly show the

sides of the wave as both thicker and closer together

(i.e., with a more narrow opening) than the wave design in

the application. Also, the design in applicant’s prior

mark is not of uniform thickness, but rather tapers at the

6

Registration No. 2,460,180, registered June 12, 2001. Sections

8 and 15 affidavits accepted and acknowledged. Renewed. The

only exception is the use of the mark on Christmas ball

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Ser. No. 77455710

ends, whereas the design in the application is uniformly a

thin line throughout.

In short, the wave design that applicant uses in other

contexts is not the same mark that applicant now seeks to

register. Accordingly, these past uses and registration

cannot be used by applicant to show that the design in the

application is distinctive, rather than ornamental, because

ornaments, but in that case the ornament itself creates the

circle on which the wave appears.

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Ser. No. 77455710

they do not show use of the same mark Cf. In re Dial-A-

Mattress Operating Corp, 240 F.3d 1341, 57 USPQ2d 1807,

1812 (Fed. Cir. 2001) (“A mark is the legal equivalent of

another if it creates the same, continuing commercial

impression such that the consumer would consider them both

the same mark.”) citing Van Dyne-Crotty, Inc. v. Wear-Guard

Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir.

1991); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-206

(TTAB 1997) (“[P]ersons exposed to applicant’s registered

mark ... would, upon encountering [applicant’s yellow

rectangle and red circle design] ... , be likely to accept

it as the same mark or as an inconsequential modification

or modernization thereof .... [A]pplicant may ‘tack on’ to

its use of the mark in question, the use of the registered

mark ... and therefore may properly rely upon its

registration in support of its claim of distinctiveness

herein.”); and Morehouse Mfg Corp. v. J. Strickland & Co.,

407 F.2d 881, 160 USPQ 715 (CCPA 1969) (“As a matter of

law, the opposer cannot be damaged, within the meaning of

section 13 of the statute, by the issuance to the applicant

of a second registration where applicant already has an

existing registration of the same mark for the same

goods.”). Because the prior uses and the applied-for mark

do not create the same commercial impression, such that the

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Ser. No. 77455710

consumer would consider them both the same mark, we find

that consumers will not view the wave design on applicant’s

clothing as identifying a secondary source for the goods,

and therefore are not likely to perceive the applied-for

wave design as performing a source-identifying function.7

CONCLUSION

Although we find that there is no per se rule

excluding a large-size mark from registration on the

Principal Register, applicant has not shown that the design

in the application is inherently distinctive. In making

this determination, we have considered the commercial

impression created by the mark, the relevant practice in

the industry, and any distinctiveness in determining

whether applicant’s applied-for design would be perceived

as a mark or merely as ornamentation for the goods. We

also find that applicant has not shown that its prior use

is of the same mark such as to show that the design in the

application would be regarded by consumers as a trademark.

Accordingly, without a showing of acquired distinctiveness,

we find that the design in the application would be

perceived by consumers as merely ornamental.

7

Alternatively, applicant argues that the ornamentation refusal

is premature in this intent-to-use application. However, the

Board has found that such refusal may be made if a well-defined

drawing is ornamental “on its face.” In re Right-On Co., 87

USPQ2d at 1157.

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Ser. No. 77455710

Decision: The refusal to register is affirmed.

19