Repeating Pattern Marks Registration December 18, 2014 Comments and Suggestions by J. Thomas McCarthy, Senior Professor University of an Francisco Founding Director, McCarthy Institute of IP firstname.lastname@example.org Comments on Draft of December 11, 2014 for Examination Guide for Repeating Patterns The guideline conflates the two different requirements of whether a designation serves as a trademark at all and whether ...more »
Repeating Pattern Marks Registration
December 18, 2014 Comments and Suggestions by
J. Thomas McCarthy, Senior Professor
University of an Francisco
Founding Director, McCarthy Institute of IP
Comments on Draft of December 11, 2014 for Examination Guide for Repeating Patterns
The guideline conflates the two different requirements of whether a designation serves as a trademark at all and whether it is inherently distinctive. For example:
“However, because of the ornamental and typically nondistinctive nature of repeating patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the Principal Register without proof of acquired distinctiveness.”
The qualifications of “often” and “in which case” admit the possibility of a repeating pattern which is inherently distinctive. I think the proposed guideline becomes unwieldy because it admits the possibility that a repeating pattern could fit in the category of being inherently distinctive. I recommend that the guideline state clearly that a repeating pattern should never be placed on the Principal Register unless acquired distinctiveness has been shown to the satisfaction of the Examiner.
Evidence that the pattern serves as a mark is inevitably the same kind of evidence as will also prove acquired distinctiveness under §2(f) (secondary meaning). I see no advantage in complicating the rule by opening the door to the possibility of an applicant for a repeating pattern who submits evidence sufficient to prove that it is likely to be perceived as a mark, yet at the same time does not need to prove secondary meaning. The one “stone” of evidence can kill “two birds” (mark status and acquired distinctiveness). For example, robust “look for” evidence will prove both elements at once.
The hypothetical example in Part B was artificially created to try to come up with a repeating pattern that qualified as an “inherently distinctive” example. In my view, this example should not be in that category. The “anthropomorphic registration symbol” as a single image might itself be inherently distinctive, but its mere repetition on a purse does not magically transform the repetition as a whole into an inherently distinctive mark – to the contrary, the repetitive pattern would likely be perceived as mere “wallpaper” or background ornamentation, not as an identifying trademark for purses. If that seller wants a registration, it should register a single image and it could then use that registration to sue a junior user who repeats the image in a repeating pattern on a purse or related goods.
A repeating pattern should be placed in the same category as similar designations that the courts and the Board have held always require proof of acquired distinctiveness and cannot be placed in the inherently distinctive classification. The Supreme Court has held that both a single color of a product and trade dress that is the design of a product can never be inherently distinctive and can only be registered on a showing of secondary meaning. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 163, 34 USPQ2d 1161 (1995) (“We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of color alone as a trademark, where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source.’”) and Wal-Mart Stores, Inc. v. Samara Brothers, 529 U.S. 205, 212, 54 USPQ2d 1065, (2000) (“[Product] design, like color, is not inherently distinctive.”) See McCarthy, Trademarks & Unfair Competition, §18:12.50 (4th ed.)
The T.T.A.B. followed the Supreme Court's rule regarding color and product design to hold that sounds for goods that emit a sound in the normal course of operation cannot be inherently distinctive: registration can be obtained only on proof of the acquisition of a secondary meaning under Lanham Act §2(f). In re Vertex Group LLC, 89 U.S.P.Q.2d 1694, 2009 WL 398091 (T.T.A.B. 2009). Similarly, the Trademark Board has said that because flavor is usually perceived as a characteristic of the goods, not as a source indicator, flavors, like single colors and scents, can never be inherently distinctive. Thus, flavor requires proof of secondary meaning - acquired distinctiveness. In re N.V. Organon, 79 U.S.P.Q.2d 1639, 2006 WL 1723556 (T.T.A.B. 2006) (“Because flavor is generally seen as a characteristic of the goods, rather than as a trademark, a flavor, just as in the cases of color and scent, can never be inherently distinctive.”)
Repeating pattern designations should be placed in the same category as single colors, product designs, product sounds and flavors. Such a rule would be more simple and easier for Examiners to follow.