1202.03(f) Ornamentation: Case References
The following cases show the various ways in which ornamental matter was found not to function as a mark.
1202.03(f)(i) Slogans or Words Used on the Goods
Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710, 1716 (TTAB 2016) (finding that customers purchase products with the phrase I ♥ DC specifically because they are ornamented with the phrase in an informational manner and that, given the phrase’s "significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label"); In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013) (finding that proposed mark NO MORE RINOS! conveys a political slogan devoid of source-identifying significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (SUMO, as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps, serves merely as an ornamental feature of applicant's goods); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (YOU ARE SPECIAL TODAY for ceramic plates found to be without any source-indicating significance); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts."); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (DAMN I’M GOOD, inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance).
See also TMEP §1202.04 regarding informational matter.
1202.03(f)(ii) Designs Used on the Goods
See In re General Tire & Rubber Co., 404 F.2d 1396, 160 USPQ 415 (C.C.P.A. 1969) (three narrow white concentric rings of approximately equal width applied to the outer surface of a dark sidewall tire considered just a refinement of a general ornamental concept rather than a trademark); In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (C.C.P.A. 1961) (two parallel colored bands at the top of the sock, the upper band red, and the lower band blue, for men’s ribbed socks held merely ornamental absent convincing evidence that the purchasing public recognized the design as a trademark); In re Sunburst Prods., Inc.,51 USPQ2d 1843 (TTAB 1999) (combination of matching color of watch bezel and watch band and contrasting colors of watch case and watch bezel for sports watches found to be nothing more than a mere refinement of a common or basic color scheme for sports watches and, therefore, would not immediately be recognized or perceived as a source indicator); In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451 (TTAB 1987) (floral pattern design of morning glories and leaves for tableware not distinctive and not shown to be other than decorative pattern without trademark significance).
1202.03(f)(iii) Trade Dress on the Containers for the Goods
See In re J. Kinderman & Sons Inc., 46 USPQ2d 1253 (TTAB 1998) (design of container for Christmas decorations that resembles a wrapped Christmas gift not inherently distinctive); In re F.C.F. Inc., 30 USPQ2d 1825 (TTAB 1994) (rose design used on cosmetics packaging is essentially ornamental or decorative background and does not function as mark); In re Petersen Mfg. Co., 2 USPQ2d 2032 (TTAB 1987) (design representing the rear panel of a container for hand tools held unregistrable as merely ornamental, notwithstanding §2(f) claim).