United States: Registrable Trademark or Merely Ornamental?

It’s fundamental that trademark registration is available to only those words, phrases, designs or combinations that function as trademarks. To function as a trademark, such a word, design, or combination must be perceived as a source indicator—a symbol of the goodwill of the company that manufactures, produces, or distributes goods under the mark. Or, as it’s often put in the United States, it must be perceived as a "brand."

It would seem to be axiomatic, then, that material that functions purely as an adornment or a decoration is not entitled to protection as a trademark. Nevertheless, many U.S. trademark registration applicants have been surprised to receive a refusal of registration on the grounds that the proposed mark does not function as a trademark at all, but consists of material that is "merely ornamental." The disappointment may sometimes arise from the fact that many trademark applicants—and even some trademark attorneys—have an insufficient understanding of what it is that trademark registration protects. But it also may arise from the fact that, in today’s market, it is often difficult to tell whether a particular word, phrase or design is "merely ornamental" or carries branding connotations as well.

The Trademark Manual of Examining Procedure of the United States Trademark Office provides:

U.S. Trademark Manual of Examining Procedure (TMEP) § 1202.03.

It is probably self-evident even to those who don’t practice trademark law that the term KOBAYASHI on the bottom of a coffee cup is likely to be perceived as a trademark, while the phrase WORLD’S GREATEST MOM on the side of a coffee cup is not. Those are the easy cases. But what about the tougher calls that fall into the middle ground?

The TMEP provides U.S. trademark practitioners with a defining spectrum. At one end of this spectrum is material that is inherently distinctive and clearly used as a mark. There is no question that material appearing, for example, on the bottom of a mug, on the hangtag of a t-shirt, or in the margins of a poster, is likely to be perceived as serving a trademark function. If such material is inherently distinctive and not confusingly similar to a prior registered mark, it is entitled to immediate registration.

But when the material in question appears in a context that might normally suggest ornamentation, such as on the side of a mug, emblazoned across the chest or back of a t-shirt, or in the "content" zone of a poster, additional analysis is necessary. Second along the continuum, therefore, is ornamental matter that serves as an identifier of a "secondary source." Use of the term "secondary source" is perhaps unfortunate. The United States and several other English-speaking countries use the term "secondary meaning" as a synonym for "acquired distinctiveness"—the condition of a trademark that initially was not sufficiently distinctive to be perceived as a source indicator, but has subsequently become so through use in the market. "Secondary source" must be carefully distinguished from the concept of "secondary meaning," though both may be relevant to whether ornamental material may be registered as a trademark.

Simply put, a "source" is the manufacturer, producer or distributor of a product. In the case of a t-shirt, for example, it is the company that made the t-shirt, and its trademark is most likely to appear on the hangtag. A "secondary source," by contrast, is a party that authorizes, sponsors, or licenses the product. This doctrine of "secondary source" indication arises because of the common marketing practice of promoting one’s "brand" by licensing merchandise unrelated to the goods primarily associated with that brand. The BUDWEISER logo on a t-shirt, for example, is unlikely to be perceived as indicating that Anheuser-Busch has gone into the business of making t-shirts in addition to brewing beer. But it is still perceived as a trademark—namely that of the party who authorized or licensed the shirt. Anheuser-Busch is perceived as the "secondary source" of the t-shirt, and the term BUDWEISER may thus be registered for t-shirts because it serves as a secondary-source indicator.

Next along the spectrum is material that is neither inherently distinctive nor a secondary source indicator, but that has acquired distinctiveness—that is, consumers have come to recognize and regard it as a "brand." This is the doctrine of secondary meaning, and it tests the mark’s distinctiveness, as contrasted with the doctrine of secondary-source identification, which tests whether the material functions as a mark in the first place.

Further down the scale is material that is neither inherently distinctive nor a secondary-source indicator, and has not acquired secondary meaning, but is still capable of acquiring the distinctiveness necessary to function as a trademark. Such material, in other words, is not "merely ornamental"; it is used as a trademark, and capable of being perceived as one, but its owner cannot yet show that the consuming public regards it as such. Material of this kind is not registrable on the Principal Register, but may be registered on the Supplemental Register—the U.S. equivalent to the "Part B" register formerly used in the United Kingdom and some Commonwealth nations.

The bottom end of the spectrum is defined by material that is "purely ornamental," and not only does not function as a trademark but is incapable of doing so. Such material is unregistrable on either register.

Of course many trademarks have themselves an ornamental aspect, and the TMEP is clear that such trademarks are still registrable if they primarily serve a source-identifying function, and are ornamental or decorative only secondarily. In determining whether material submitted for trademark registration serves a source-identifying function (or is capable of doing so), or is "merely ornamental," U.S. courts and Trademark Office Examining Attorneys will often consider what sort of ornamentation is standard for the kind of goods at issue. Thus, a repetitive design of pentagonal shapes over the entire surface of a soccer ball was found incapable of functioning as a trademark, In re Soccer Sport Supply Co., Inc., 507 F.2d 1400 (CCPA 1975); parallel red and blue bands at the top end of a men’s sport sock were held merely ornamental, In re David Crystal, Inc., 296 F.2d 771 (CCPA 1961); a series of white concentric rings on an automobile tire were held to be merely a refinement of a standard ornamental concept, not a trademark, In re General Tire & Rubber Co., 404 F.2d 1396 (CCPA 1969); and a floral pattern of morning glories and leaves on tableware were found to be a decorative pattern incapable of trademark significance, In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987). On the other hand, through repeated and consistent use in connection with kitchenware, a blue cornflower design was held to have acquired distinctiveness, indicating that consumers viewed the design as an indication of origin, not merely as a decorative design, Anchor Hocking Glass Corp. v. Corning Glass Works, 162 USPQ 288 (TTAB 1969).

One of the tougher cases on this issue is In re Hechinger Investment Co. of Delaware, Inc., 24 USPQ2d 1053 (TTAB 1992). There the trademark registration applicant operated a hardware store and sought to register the image of a cartoon dog as a trademark for "retail housewares, hardware, lumber and millwork store services." The dog, jocularly named "Twobafor," was depicted in print advertisements for the applicant’s store, as well as in signage throughout the store. However, the dog was shown in different positions and in different costumes, depending upon the season of the year, the occasion of the sale, or the type of merchandise being promoted. Thus Twobafor might be seen wearing a stocking cap and raking up leaves in one ad, wearing Santa Claus getup in a Christmas ad display, and in a baseball uniform to promote a spring housecleaning sale. Because the character was displayed in different postures and garb, it was found to be purely ornamental, and not to serve a source-identifying function in promoting the applicant’s services. As a matter of U.S. Trademark Office policy, ornamentalism refusals apply only to trademarks, not to service marks like the Hechinger dog. But the Hechinger holding is bolstered by the well-established principle that a design must be used in a consistent form in order to be registrable as a trademark.

Also of illustrative value in the area of design ornamentation are the cases of Frederick Warne & Co., Inc., a publisher that attempted to use trademark law to extend the expired copyright protection in illustrations associated with the beloved children’s tales of Beatrix Potter. Warne sought to register cover art from Potter’s The Tale of Jeremy Fisher as a trademark in the United States, In re Frederick Warne & Co., Inc., Serial No. 165,938, Slip Opinion (TTAB, 1983); and also sought to prevent a competing publisher from using familiar Peter Rabbit illustrations in its editions of the public domain works. Frederick Warne & Co., Inc. v. Book Sales Inc., 481 F. Supp. 1191 (SDNY, 1979). In both cases, the illustrations were held to be merely ornamental with respect to the books, and to have no source-identifying significance. Similarly, a t-shirt design showing the fronts and backs of cats, "Cats Coming and Going," was found to have no source-identifying significance either as a trademark or as trade dress in Grupke v. Linda Lori Sportswear, Inc., 921 F. Supp. 987 (EDNY 1996).

A different analysis must be applied to words, phrases, and slogans, since in this area there are seldom any industry standards with which to compare the use proposed for registration. In such cases, consumer perception is paramount. Thus, even though the phrase DAMN I’M GOOD was the name of the producer of the goods and was displayed on hang-tags affixed to the goods, the slogan was found to lack any source-indicating significance in the eyes of consumers. Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357 (SDNY 1981). So was the word SUMO used in connection with a sumo wrestler design on t-shirts and caps. In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988).

Use of a slogan on a t-shirt can create a tough call in this regard. For example, the phrase YOU MIGHT BE A REDNECK IF … used on t-shirts was held to infringe the trademark rights of a comedian well known for using that phrase in his comedy routines, in Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200 (N.D. Ga. 1995). The court found that the phrase was so widely associated with the entertainer that it had acquired trademark significance in the eyes of the consuming public.

However, t-shirt "content" that does not identify a "secondary source" as in our BUDWEISER and REDNECK examples is likely to be perceived solely as a clever or significant phrase or message, not as a source-indicator. The TMEP gives the example of t-shirts bearing the phrase SWALLOW YOUR LEADER. Even less likely to be perceived as having trademark significance are standard greeting-card-style thoughts and one-liners such as SOMEONE IN [insert city] LOVES ME or MY GRANDMA WENT TO [insert city] AND ALL I GOT WAS THIS LOUSY SHIRT.

The lesson here is that inventing a clever saying does not entitle one to trademark protection. Since short phrases are not protected by copyright, either, the entrepreneur who comes up with some snappy non-source-indicating copy for the front of a t-shirt or the side of a coffee mug must resign himself to delivering that material into the public domain (and thus into the hands of competing merchandisers).

The ornamentalism issue is particularly relevant to the recently publicized dispute over trademark rights in the phrase "Let’s roll." These were purportedly the last words of technology executive Scott Beamer on September 11, 2001, as he and other passengers aboard Flight 93 mounted a counter-offensive against terrorists who had commandeered the plane and were evidently heading it toward the White House. The passengers’ legend-making self-sacrifice caused the plane to crash in the Pennsylvania countryside, miles from its target. The phrase "Let’s roll" was soon reiterated by President George W. Bush and many others, in a variety of contexts, and became the title and subject of a hit song by ageless rock singer Neil Young.

But when a number of entrepreneurs applied to register LET’S ROLL as a trademark for t-shirts and a wide variety of other merchandise, the Todd Beamer Charitable Foundation protested, asserting a trademark right in the phrase. Other commentators objected on non-trademark grounds, claiming that the phrase should be considered "sacred" and should not be allowed to be commercially exploited. But whether the phrase is sacred, or whether the Foundation has a trademark right in the phrase and for what goods or services, is not likely to be the issue. Ultimately, the registrability of LET’S ROLL for merchandise is likely to depend upon whether the public perceives that phrase as having trademark significance at all, rather than as a celebratory use of a bit of content for a purpose that is merely ornamental.

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Robert C. Cumbow is a shareholder and head of the intellectual property practice at the Seattle, Washington law firm of Graham & Dunn PC.