1202.19(e)    Failure-to-Function Refusal – Mark Not Inherently Distinctive

The USPTO will not register an applied-for mark unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) ("Before there can be registration, there must be a trademark . . . ."); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) ("Registration presupposes the existence of a trademark to be registered."); TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See 15 U.S.C. §1127; TMEP §1202.

The examining attorney must determine whether a repeating-pattern mark functions as a trademark or service mark by reviewing the available evidence, including the specimen and any other materials of record. See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) ("Since the specimens of record show how the applied-for mark is actually used in commerce, we must primarily look to the specimens to see if the designation would be perceived as a source indicator. However, we may also consider other evidence bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.").

Not every designation that a party places on goods or packaging, or uses in connection with services, is an inherently distinctive source indicator, regardless of the party’s intentions when adopting the designation. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) ("As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself."). Some designations are not capable of serving as a source indicator. See In re Eagle Crest, Inc., 96 USPQ2d at 1229; Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973).

1202.19(e)(i)    Inherent Distinctiveness Determination

Because repeating patterns frequently serve an ornamental function in various contexts, they are often not inherently distinctive when applied to goods, packaging, or materials associated with services. Instead, consumers may perceive these patterns as nothing more than ornamentation or background matter serving no source-indicating function. Thus, determining whether a repeating-pattern mark is inherently distinctive and functions as a source indicator involves considering the impression created when the mark is used in connection with the identified goods or services. See In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) ("A critical element in determining whether matter sought to be registered is a trademark is the impression the matter makes on the relevant public. Thus . . . the critical inquiry is whether the asserted mark would be perceived as a source indicator. . . . To be a mark, the term must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods. . . . We determine whether this has been achieved by examining the specimens of use along with any other relevant material submitted by applicant during prosecution of the application.").

Relevant considerations when determining inherent distinctiveness include those discussed below.

1202.19(e)(i)(A)    Common or Widely Used Pattern

Evidence showing that the repeating pattern in the applied-for mark is similar to, or a mere refinement or variation of, a common pattern (such as a houndstooth or gingham-check pattern) or a pattern that is widely used on the relevant items, may support the conclusion that the applied-for mark is not inherently distinctive. See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977); see also Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d 2001, 2012 (TTAB 2013) ("Because houndstooth is a known textile pattern, the crucial question is whether there is a point at which the houndstooth pattern transitions from being an ornamental fabric design to a proprietary design that identifies and distinguishes opposers’ products and services.")

On the other hand, if the nature of the repeating pattern is unique or unusual as applied to the relevant items, a finding of inherent distinctiveness may be appropriate. See Seabrook Foods, Inc., 568 F.2d at 1344, 196 USPQ at 291.

However, the mere fact that the applicant is the only user of the particular repeating pattern is not dispositive as to the inherent distinctiveness of a mark featuring that pattern. See In re E S Robbins Corp., 30 USPQ2d 1540, 1543 (TTAB 1992) ("If the concept of inherent distinctiveness was defined as meaning simply ‘one and only,’ then one could obtain a registration for a design which, while ‘unique’ in this sense, differed only slightly from the designs of other competing products and/or containers."). The examining attorney must weigh this factor together with any other relevant factors.

1202.19(e)(i)(B)    Pattern Creates a Distinct Commercial Impression Apart from Other Matter

The examining attorney should consider whether the pattern creates a commercial impression distinct from any wording or other matter that may also appear on the relevant items. See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977). If so, this weighs in favor of finding the pattern inherently distinctive.

1202.19(e)(i)(C)    Nature of Elements in the Repeating Pattern

If a repeating-pattern mark contains an element, such as arbitrary wording, which would be perceived as a source indicator if it were to appear by itself, then the relevant consumers may be more likely to perceive the repeating pattern as a source indicator.

1202.19(e)(i)(D)    Industry Practice

Purchasers are unlikely to view a repeating-pattern mark as an indicator of source if the relevant industry practice is to use repeating patterns in an ornamental fashion with the relevant goods or services. However, if, because of common industry practice, consumers have come to view repeating patterns on the surface of the relevant goods, packaging, or other materials as an indicator of source, and the applied-for mark is more than common background matter, then a finding that the mark is inherently distinctive may be appropriate.

1202.19(e)(i)(E)    Type of Product

The type of item the mark is applied to affects whether consumers perceive the repeating pattern as a mark rather than merely as ornamental or other nondistinctive matter. For example, when repeating patterns appear on items such as clothing, curtains, pillows, bedding, carpet, furniture, and stationery, the patterns are likely to be perceived as decoration because those types of goods are typically purchased or used, at least in part, for their aesthetic appeal. On the other hand, if the type of item the mark is applied to does not usually feature decorative matter, or is not usually purchased or used for its decorative features, like power tools, industrial machinery, or surgical equipment, a repeating pattern may be more likely to be perceived as a source indicator.

1202.19(e)(ii)    Statutory Basis for Refusal

When the applicant has sought registration of a repeating-pattern mark on the Principal Register without claiming acquired distinctiveness, and the examining attorney determines that the mark is not inherently distinctive, registration must be refused on the ground that the mark fails to function as a source indicator, citing Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The examining attorney must explain the specific reasons for the refusal and provide relevant supporting evidence. See TMEP §1202. The stated reason for refusal will usually be that the applied-for mark is merely ornamental as used on or in connection with the goods or services. However, in some instances, the applied-for repeating-pattern mark may be simply nondistinctive, serving neither an ornamental nor a source-indicating purpose. In either case, the same statutory bases apply.

If registration is sought on the Supplemental Register, but the examining attorney determines that the mark is incapable of serving as a source indicator, registration must be refused on that ground under Trademark Act §§23 and 45. 15 U.S.C. §§1091, 1127.

1202.19(e)(iii)    Response Options

If an applied-for mark is capable of serving as a source indicator, the applicant may respond to the refusal by submitting a substitute specimen showing use of the mark as a trademark or service mark, amending to the Supplemental Register, or claiming acquired distinctiveness under Trademark Act Section 2(f), if otherwise appropriate. For repeating-pattern marks that are capable of serving as source indicators but are not inherently distinctive, evidence of five years’ use, by itself, is insufficient to show acquired distinctiveness. See TMEP §1212.05(a). That is, actual evidence showing that consumers have come to recognize the applied-for mark as a source indicator will be required to establish acquired distinctiveness. See id.

Furthermore, for repeating-pattern marks used on goods, any showing of acquired distinctiveness must be made with respect to all of the identified goods for which the examining attorney has determined the mark is not inherently distinctive. For repeating-pattern marks used in connection with services, the evidence of acquired distinctiveness must establish that the mark, as used on all of the relevant items, has come to be perceived as a source indicator for the identified services.

See TMEP §816 regarding amendment to the Supplemental Register and TMEP §§1212-1212.10 regarding claims of acquired distinctiveness.

The applicant may also submit evidence of secondary source to establish that a repeating-pattern mark primarily serves a source-indicating function rather than merely serving as ornamentation. As discussed in TMEP §1202.03(c), there are a number of acceptable types of evidence for showing secondary source, such as proof of ownership of a use-based U.S. registration on the Principal Register for the same mark covering other goods or services. However, evidence of a series of ornamental uses of a repeating-pattern mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark or service mark for the other goods or services must be shown. TMEP §1202.03(c); see also In re Astro-Gods Inc., 223 USPQ 621, 622-24 (TTAB 1984).