Joanne Slokevage

Trademark Trial and Appeal Board

Nov 10, 2004

No. 75602873 (T.T.A.B. Nov. 10, 2004)

Mailed:
November 10, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Joanne Slokevage
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Serial No. 75602873
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Joanne Slokevage, pro se.
Douglas M. Lee, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Joanne Slokevage seeks registration on the Principal
Register of the mark FLASH DARE! and design:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75602873
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for goods identified in the application as filed, as
“pants, overalls, shorts, culottes, dresses, skirts,” in
International Class 25.1 In the application papers, as
filed, applicant described the mark as “A configuration
located on the rear hips comprised of: A label in the
center with the words ‘FLASH DARE!’ on a V-shaped
background; and on each of the two sides of it there is a
clothing feature (a cut-out area, or ‘hole,’ and flap
affixed to seat area with a closure device); the top
borders of the ‘holes’ also forming and continuing the
‘vee’ shape. The matter shown by the dotted lines is not
part of the mark, and the dotted lines serve only to show
the position of the mark.”
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that this
matter constitutes a configuration of the goods which is
not inherently distinctive and thus would not be perceived
as a trademark under Sections 1, 2 and 45 of the Trademark
Act, 15 U.S.C. §§1051, 1052 and 1127.
1 Application Serial No. 75602873 was filed on December 4,
1998, based upon applicant’s allegation of first use of the mark
in commerce at least as early as December 18, 1997.
Serial No. 75602873
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The Trademark Examining Attorney had given applicant
the option of disclaiming the design features or submitting
evidence of acquired distinctiveness for those features.
Applicant has refused these alternatives.
In his appeal brief (p. 8), the Trademark Examining
Attorney’s summarized his position as follows:
It is noted that if applicant had
applied for the words “FLASH DARE” by
themselves as the proposed mark, the mark
clearly would be considered inherently
distinctive. In fact, applicant has
registered the typed mark “FLASH DARE!”
[Reg. No. 2200287] on the Principle [sic]
Register ….
The U.S. Supreme Court [in Wal-Mart
Stores, Inc. v. Samara Brothers, Inc., 529
US 205, 54 USPQ2d 1065 (S. Ct. 2000)] has
already ruled that a clothing design
configuration is never inherently
distinctive. Applicant now apparently seeks
to register its [sic] clothing feature
configuration (which it [sic] has previously
been unable to register on the Principle
[sic] Register) on the Principle [sic]
Register by merely including the words
“FLASH DARE!” as part of the configuration.
Allowing applicant to do so in this manner
would clearly render the ruling in Samara
toothless and meaningless, easily
circumvented by applicants. This seems to
run contrary to the intent of the Court. As
the Court reiterated in Samara, “[t]o the
extent there are close cases, [the Board]
should err on the side of caution and
classify ambiguous trade dress as product
design, thereby requiring secondary
meaning.” 54 USPQ2d at 1070.
Serial No. 75602873
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By contrast, applicant argues that the Supreme Court’s
decision in Wal-Mart v. Samara, supra, is not applicable,
as that case was dealing with nothing more than trade
dress, while the disputed matter herein comprises words
combined with arbitrary devices. Applicant argues that her
combination of arbitrary elements is strategically placed
on all of her garments in the same manner. She contends
that this arrangement of specific components is at the
heart of her branding image, and has been carefully
designed to identify applicant’s goods and to distinguish
them from the goods of others in the field of sportswear
directed to girls and young women. She points out that the
stylized wording of FLASH DARE! and the other features
shown on the involved drawing are consistently presented in
a particular size and location on every garment in the
FLASH DARE! line of sportswear. She emphasizes the
physical arrangement of the elements and the distinctive
core message to potential consumers. In short, she seems
to argue that all the various elements, taken together,
create an edgy, eye-catching message suggesting the wearer
might “dare-to-flash” some skin on her posterior.
Key to applicant’s argument is the contention that
what is shown in the drawing is a unitary commercial
Serial No. 75602873
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message where the inherent distinctiveness of the total
mark derives from the combination of all the features, and
that the applied-for matter is a “unitary mark” not subject
to dissection:
The reason this application was filed is
because of the added distinctive subject
matter, and the resulting relationship
between all the elements of the mark
together, creating a unitary mark possessing
a very original distinctive commercial
message. Every garment in the Flash Dare!®
Sportswear line has the mark of this
application; the Flash Dare! label is not
used alone; the clothing feature is not used
alone. It is this combination together,
because of its commercial message, that the
applicant seeks to protect as its [sic]
source identifier.
…
After dissecting the mark, the Examiner focused
only on the holes and flaps. This was an error.
In the Final Refusal 10/25/00 the Examiner states
“Clothing designs are never inherently
distinctive. Wal-Mart is applicable in this
case.” The mark combines words, a label design,
holes, flaps, and a linking “vee”, see Drawing
page description, Evidence Tab 1. All of these
elements must be taken into consideration.
Applicant’s reply brief of July 22, 2004, pp. 7, 11.
First, we reject applicant’s argument that the
applied-for matter is unitary. While the applied-for
matter qualifies as a “composite” mark – i.e., one where
applicant may, in her discretion, combine the various
elements into a single drawing for purposes of registration
– it cannot be deemed to be “unitary.” Given the display
Serial No. 75602873
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of items shown in the instant drawing, these various
elements are not so merged together that they cannot be
divided and treated as separable elements. Cf. TMEP §1305
and §1305(f). Applicant’s earlier registration of the
words FLASH DARE! – the only literal element of the
applied-for matter – supports the conclusion that the words
create a separate and distinct commercial impression apart
from the other elements. Cf. TMEP §807.14(b).
While the Trademark Examining Attorney offered
applicant the option of disclaiming the design features or
submitting evidence of acquired distinctiveness for those
features, applicant has refused these alternatives.
Accordingly, any documentation of applicant’s extensive
promotional activities consistent with her aggressive
branding of the product design, her edgy, eye-catching
message of the FLASH DARE! advertising campaign, or her use
of the same product design on an entire line of clothing –
evidence that may well be part and parcel of a showing of
acquired distinctiveness – is not relevant to our
determination herein. The sole issue before us is whether
the product design features of this composite matter can be
considered to be inherently distinctive.
Serial No. 75602873
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Moreover, we agree with the position of the Trademark
Examining Attorney that the holes and flaps portion of the
applied for matter comprises product design or trade dress.2
Accordingly, this holes and flaps product design may not,
as the Supreme Court held in Wal-Mart v. Samara, supra, be
registered absent a showing of acquired distinctiveness (or
a disclaimer). We find that applicant’s unusual “product
design” qua trade dress will not be regarded as a source
indicator at the time of its introduction:
Consumers are aware of the reality that,
almost invariably, even the most unusual of
product designs – such as a cocktail shaker
shaped like a penguin – is intended not to
identify the source but to render the
product itself more useful or more
appealing.
The fact that product design almost
invariably serves purposes other than source
identification not only renders inherent
distinctiveness problematic; it also renders
application of an inherent-distinctiveness
principle more harmful to other consumer
interests. Consumers should not be deprived
of the benefits of competition with regard
to the utilitarian and esthetic purposes
that product design ordinarily serves by a
rule of law that facilitates plausible
2 The fact that applicant has registered on the Supplemental
Register [see Reg. No. 2168684] a drawing of one side of this
clothing feature (e.g., where the flap, when affixed to the
right, seat pocket button, creates a hole) is consistent with a
conclusion that this portion of the instant composite comprises a
non-inherently distinctive clothing feature. Adding the
mirroring, left-side feature certainly does not change this
result.
Serial No. 75602873
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threats of suit against new entrants based
upon alleged inherent distinctiveness. How
easy it is to mount a plausible suit
depends, of course, upon the clarity of the
test for inherent distinctiveness, and where
product design is concerned we have little
confidence that a reasonably clear test can
be devised.
Wal-Mart v. Samara, at 1069.
Accordingly, we find that the holes and flaps portion
of the applied for matter constitutes a product design
which is not inherently distinctive, and would not be
perceived as a trademark under Sections 1, 2 and 45 of the
Trademark Act, 15 U.S.C. §§1051, 1052 and 1127.
Decision: The refusal to register, based upon the
fact that this composite matter includes elements of non-
distinctive product design, is hereby affirmed. However,
in accordance with Trademark Rule 2.142(g), this decision
will be set aside and applicant’s applied-for matter will
be published for opposition if applicant, no later than
thirty days from the mailing date hereof, submits an
appropriate disclaimer of the holes and flaps portion of
the applied-for matter.