The Trademark Trial and Appeal Board (“TTAB”) has held that while there is no per se rule against registering a large-size design mark, the applicant must show that the design is inherently distinctive in order to be registerable. In re Lululemon Athletica Canada Inc., Serial No. 77455710 (TTAB, January 11, 2013) (available here). Lululemon Athletica (“Lululemon”) applied for a trademark registration of a mark used on its hooded sweat shirts, jackets, and coats. The mark is a wave-shaped line on the front of the garment (herein the “Wave Design”), creating a shape similar to Lululemon’s trademarked logo. The examining attorney denied the registration on the ground that the design was merely ornamental. Lululemon appealed to the TTAB.
The issue was whether the public would see the Wave Design as an indicator of source (a trademark for Lululemon’s goods) or merely a form of ornamentation (decoration). There are two ways to show that an ornamental design warrants a trademark registration: (1) the design is inherently distinctive or has acquired distinctiveness as to the goods in the application (for example, five (5) years of exclusive use); or (2) the design was used or registered in a non-ornamental manner for other goods or services.
“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.” Lululemon, Slip Op. P. 4. Lululemon argued that the Wave Design was not merely ornamental because (1) it has a commercial impression of a distinctive design; and (2) competitor’s use of similar large marks on their clothing suggests that the public would perceive Lululemon’s Wave Design as a trademark and not as merely ornamental.
The standard for determining whether a design is merely ornamental includes considering the size, location, and dominance of the design. Looking at the evidence, the TTAB rejected the per se rule regarding the registrability of a mark based on the size of the 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.” Lululemon, Slip Op. P. 11. In looking at the Wave Design, the TTAB concluded that it was likely to be perceived as “merely ornamental’ because the design was simple and looked like piping, giving the commercial impression of ornamentation.
The TTAB turned to whether the ornamental Wave Design was recognizable as a trademark. “It is a matter of common knowledge that T-shirts are ‘ornamented’ with various insignia . . .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.” In re Olin Corp., 181 USPQ 182, 182 (1973). Lululemon argued that it had used the Wave Design as a mark on other goods and services, and therefore that the public would perceive the Wave Design as a trademark. The TTAB disagreed, finding that Lululemon’s evidence of prior use showed a different Wave Design. “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[.]” Lululemon, Slip Op. P. 15. In addition, the prior use design also had thicker and closer together sides of the wave, with tapered ends. In contrast, the Wave Design is a uniformly thin line. As such, the TTAB rejected Lululemon’s prior use argument. “Because the prior uses and the applied-for mark do not create the same commercial impression, such that the 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.” Lululemon, Slip Op. Pp. 17-18. The TTAB concluded that Lululemon’s Wave Design would be perceived by consumers as merely ornamental, and affirmed the examining attorney’s refusal to register.