Lululemon Athletica Canada Inc.

Trademark Trial and Appeal Board

Jan 11, 2013

No. 77455710 (T.T.A.B. Jan. 11, 2013)

Mailed:
January 11, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Lululemon Athletica Canada Inc.
________

Serial No. 77455710
_______

Ann K. Ford, Thomas E. Zutic and David M. Kramer of DLA
Piper LLP, for Lululemon Athletica Canada.

Ellen J.G. Perkins, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Ritchie, and Wolfson, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Lululemon Athletica Canada Inc., applicant herein
(“applicant”), seeks registration on the Principal Register
of the design shown below for “hooded sweat shirts; jackets;
coats,” in International Class 25:1

1 Serial No. 77455710, filed on April 23, 2008.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 77455710
2

The description states: The mark consists of a single line
in a wave design that is applied to the front of a garment.
The dotted lies [sic] showing the outline of a garment does
not form part of the mark, but is used only to show
placement of the mark.
The trademark examining attorney refused registration
pursuant to Trademark Act Sections 1, 2, and 45, 15 U.S.C.
§§ 1051, 1052, and 1127, on the ground that applicant’s
Ser. No. 77455710
3
design is merely ornamental as applied to the goods being
offered. The application was originally filed pursuant to
Section 1(a), and claiming a priority filing date under
Section 44(d). On May 11, 2010, after receiving a final
refusal, applicant responded by, among other things,
amending the filing basis to rely instead on Sections 1(b)
and 44(e). Applicant did not amend the application to
submit a claim, either directly or in the alternative, that
the design has acquired distinctiveness and is registrable
under section 2(f). The examining attorney issued a
subsequent final Office action continuing the refusal.
Applicant made a timely appeal of the refusal. Both
applicant and the examining attorney filed briefs.
ORNAMENTATION
This case presents the question of whether the public
would perceive the wave design as an indicator of source
(i.e., a trademark) or, instead, merely as a form of
decoration or ornamentation. Absent a showing that
ornamental or decorative matter is inherently distinctive or
has acquired distinctiveness as to the goods in the
application, there is another way that an applicant can show
that such matter serves as a trademark: by showing that the
applicant has used or registered the design in a non-
Ser. No. 77455710
4
ornamental manner for other goods or services, see TMEP §
1202.03(c) (October 2012).
Inherent Distinctiveness
“An ornamental design can be inherently distinctive if
it is arbitrary and distinctive and if its principal
function is to identify and distinguish the source of the
goods to which it is applied, ornamentation being merely
incidental. However, a design which is a mere refinement of
a commonly-adopted and well-known form of ornamentation for
a class of goods would presumably be viewed by the public as
a dress or ornamentation for the goods.” In re Soccer Sport
Supply Co., 507 F.2d 1400, 184 USPQ 345, 347 (CCPA 1975)
(citations omitted); see also, In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1687 (Fed. Cir. 2010) (“cuffs
and collar” costume of male exotic dancers was mere
refinement of a form of ornamentation in exotic dancing
industry); and Seabrook Foods, Inc. v. Bar-Well Foods Ltd.,
568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977) (applying the
relevant factors to a design feature of a mark).
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. See, e.g., Chippendales, 96
Ser. No. 77455710
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USPQ2d at 1687-88 (citing potentially relevant factors in
determining whether a costume design mark is inherently
distinctive); Soccer Sport Supply, 184 USPQ at 347 (where
competitors use similar pentagonal panels on soccer balls as
ornamentation, applicant’s use of such panels was not
inherently distinctive); In re Gen’l Tire & Rubber Co., 404
F.2d 1396, 160 USPQ 415, 417 (CCPA 1969) (white stripes are
so common on the sidewalls of tires that the general public
will likely view the claimed three concentric stripes “as
just a refinement of this general ornamental concept, rather
than as a trademark”); In re Burgess Battery Co., 112 F.2d
820, 46 USPQ 39, 40 (CCPA 1940) (the consuming public will
likely view alternating, repeating stripes on batteries to
be ornamentation and not an indicator of source); cf. In re
Swift & Co., 223 F.2d 950, 106 USPQ 286, 289 (CCPA 1955)
(although polka dots are a common form of ornamentation,
polka-dotted banding on spray can for a cleaning product was
inherently distinctive and distinctly pointed to the origin
of the product); see also TMEP § 1202.03; J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§7:24 (4th ed. 2012).
Applicant argues that the design is not merely
ornamental because (1) the commercial impression is of a
distinctive design; and (2) use by competitors of similarly
Ser. No. 77455710
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large marks on their clothing shows that consumers would
perceive applicant’s design as being a mark rather than as
merely ornamental.
The examining attorney, on the other hand, argues that
the design is not inherently distinctive and instead is
merely ornamental because (1) due to its large size,
consumers will not perceive it as a mark when used on the
“hooded sweat shirts; jackets; coats” for which applicant
seeks registration; and (2) third-party registrations show
that similar shapes and designs are registered on the
Supplemental Register or with a claim of acquired
distinctiveness under Section 2(f).2
In determining whether a design is inherently
distinctive or merely ornamental, we have found it helpful
to consider various aspects of designs and shapes, stating
repeatedly, “we must consider the size, location and
dominance of the designs in determining the commercial
impression of designs.” In re Right-On Co. Ltd., 87 USPQ2d
1152, 1156 (TTAB 2008) (finding pocket stitching that spans
both back pockets of jeans to be merely ornamental), citing
In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988)

2 The parties did not raise the issue of whether the applied-for
mark qualifies as product design or trade dress. Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065 (2000);
In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395 (Fed. Cir. 2006).
Accordingly, we decline to address that issue.
Ser. No. 77455710
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(finding applied-for matter consisting of large size
message and design suggestive of ornamentation).
The Board has found various shape designs to be
inherently distinctive and not ornamental. Some examples
include the following:

for “electrical toasters, coffeemakers, water kettles and
tea brewers.” In re Sunbeam Corp., 120 USPQ 304 (TTAB
1959);

for “a flavoring syrup, a frozen confection, a fruit or
syrup topping for ice cream and ice milk, and for flavor
Ser. No. 77455710
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ingredients for the making of ice cream or ice milk mixes.”
In re Dairy Queen of Georgia, Inc., 134 USPQ 136 (TTAB
1962); see also Vuitton et Fils, S.A. v. J. Young
Enterprises, Inc., 644 F.2d 769, 210 USPQ 351, 357 (9th Cir
1981), finding
“dark brown, vinyl-impregnated canvas,
bearing an arrangement of the initials ‘LV’
superimposed one upon the other and
surrounded by three floral symbols. The
design is in a contrasting mustard color”

to be “distinctive” for “luggage and handbags.”
In the present case, the examining attorney’s main
concern with the design in the application appears to be its
size. In this regard, the examining attorney submitted
evidence of third-party registrations showing marks covering
large areas of clothing that were either registered on the
Supplemental Register or were registered with a showing of
Section 2(f) acquired distinctiveness. Among these, the
most relevant are the following registrations on the
Supplemental Register:
Registration No. 2037960 describing “pleat of
fabric which runs from the shoulder to the cuff on
each sleeve” for “shirts”;

Registration No. 3403886 describing “pocket, horse
shoe shaped on the bottom and flat across the top”
for, among other things, “jackets”;

and the following on the Principal Register with a Section
2(f) claim of acquired distinctiveness:
Ser. No. 77455710
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Registration No. 2980286 describing “shape of the
seam which extnds [sic] vertically from either
side of the collar along the front of the garment
and then curiving [sic] horizontally to the lower
side seam of the garment in a distinctive “J”
shape” for “cardigan sweaters.”

Applicant, on the other hand, has submitted evidence
of third-party use of marks displayed in large size, to show
that consumers would perceive such a design as not merely
ornamental. Examples include the following:

Ser. No. 77455710
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It may have once been the practice in the clothing
industry to limit logos to small sizes in discrete areas
rather than to have them “emblazoned” across a garment.
See discussion in TMEP § 1202.03(a). Based on the evidence
reproduced above, however, we find that such is no longer
the industry practice, or at least no longer the only one.
Cf. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031,
Ser. No. 77455710
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1038 (TTAB 2010) (recognizing that the Board must adapt its
rules to changes in technology). Accordingly, we reject a
per se rule regarding registrability based on the size of a
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.
See, e.g., CITC Industries, Inc. v. Levi Strauss & Co., 216
USPQ 512 (TTAB 1982)(“We are not saying that a symbol or a
design covering the surface of a product cannot perform a
trademark function or that it somehow loses its origin-
indicating property when it is so used”); citing Vuitton et
Fils S.A. v. J. Young Enterprises, Inc., 210 USPQ at 357.
In this case, nonetheless, we find that applicant’s
wave design is rather simple and looks like piping, which,
unlike the highly stylized marks depicted above, is likely
to be perceived by the public merely as ornamental.3
Accordingly, the overriding commercial impression of this
large-size applied-for design is that of ornamentation.

3 “Piping” is a decorative line across a garment. See relevant
definition in American Heritage of the English Language (4th ed.
2010) “a pipelike fold of material with which edges or seams are
trimmed.” The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 77455710
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Secondary Source
Not every ornamental design will be considered merely
ornamental if it is also recognizable as a trademark. As
we have previously explained:
It is a matter of common knowledge that T-
shirts are “ornamented” with various insignia
... or ... various sayings such as “Swallow
Your Leader.” In that sense what is sought to
be registered could be construed to be
ornamental. 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.
Thus, to use our own example, “Swallow Your
Leader” probably would not be considered as an
indication of source

The ‘ornamentation’ of a T-shirt can be of a
special nature which inherently tells the
purchasing public the source of the T-shirt,
not the source of manufacture but the secondary
source. Thus, the name ‘New York University’
and an illustration of the Hall of Fame, albeit
it will serve as ornamentation on a T-shirt
will also advise the purchaser that the
university is the secondary source of that
shirt.

In re Olin Corp., 181 USPQ 182, 182 (1973) (quoted in TMEP
§ 1202.03(c) (referring to such wording or designs as
indicating a “secondary source”)).4 Applicant also argues

4 The terminology “secondary source” should not be confused with
the synonym for acquired distinctiveness, “secondary meaning.”
In the context of an ornamentation refusal, “secondary source”
simply means that the use of the design or words would be
perceived by the consumer as an indicator of source due to the
applicant’s prior use or registration of the mark for other goods
or services (not the applied-for goods). The TMEP gives examples
such as the names of colleges (known for educational services),
or a design mark used in connection with skis, emblazoned on
Ser. No. 77455710
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that it has used the same mark as the applied-for mark on
related goods and services, thereby showing that consumers
will perceive it as a trademark here.5 Applicant’s evidence
includes images of use on a storefront, Christmas ball
ornaments, a shopping bag, a luggage bag, a gift card, a
wool cap, a jacket, a bamboo yoga brick, a dense foam
brick, a yoga mat, a skidless towel, hairbands, a running
cap, and a headband. Some examples of applicant’s prior
use are set forth in the following images:

shirts or sweatshirts. See TMEP § 1202.03(c), citing In re Olin
Corp., 181 USPQ 182. In both cases, the consumer would
understand the mark on clothing to refer to the applicant’s
previously established mark for other goods or services. In
contrast, “secondary meaning” concerns whether matter that is not
inherently distinctive has, through substantially exclusive use
on the goods in question, been transformed, in the eyes of
consumers, into a source indicator.
5 Applicant originally filed specimens of use, but, as previously
noted, then changed the basis of its application to intent-to-
use and Section 44(e), and did not later provide context for the
specimens.

The examining attorney asserts that applicant’s
argument that its design is distinctive due to its use on
and registration for other products is not persuasive
because these other uses and registrations are not for the
same mark.
Ser. No. 77455710
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We agree with the examining attorney. 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,
as shown in applicant’s prior registration (shown below)
for “clothing, namely, pants, shirts, t-shirts, shorts,
sweatshirts, sweatpants, socks, jackets, coats, hats,” in
International Class 25, which was also submitted, and
relied upon, by applicant:6

Besides being highlighted by a contrasting circle,
applicant’s prior uses and registration clearly show the
sides of the wave as both thicker and closer together
(i.e., with a more narrow opening) than the wave design in
the application. Also, the design in applicant’s prior
mark is not of uniform thickness, but rather tapers at the

6 Registration No. 2,460,180, registered June 12, 2001. Sections
8 and 15 affidavits accepted and acknowledged. Renewed. The
only exception is the use of the mark on Christmas ball
Ser. No. 77455710
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ends, whereas the design in the application is uniformly a
thin line throughout.

In short, the wave design that applicant uses in other
contexts is not the same mark that applicant now seeks to
register. Accordingly, these past uses and registration
cannot be used by applicant to show that the design in the
application is distinctive, rather than ornamental, because

ornaments, but in that case the ornament itself creates the
circle on which the wave appears.
Ser. No. 77455710
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they do not show use of the same mark Cf. In re Dial-A-
Mattress Operating Corp, 240 F.3d 1341, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001) (“A mark is the legal equivalent of
another if it creates the same, continuing commercial
impression such that the consumer would consider them both
the same mark.”) citing Van Dyne-Crotty, Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866, 1868 (Fed. Cir.
1991); In re Flex-O-Glass, Inc., 194 USPQ 203, 205-206
(TTAB 1997) (“[P]ersons exposed to applicant’s registered
mark ... would, upon encountering [applicant’s yellow
rectangle and red circle design] ... , be likely to accept
it as the same mark or as an inconsequential modification
or modernization thereof .... [A]pplicant may ‘tack on’ to
its use of the mark in question, the use of the registered
mark ... and therefore may properly rely upon its
registration in support of its claim of distinctiveness
herein.”); and Morehouse Mfg Corp. v. J. Strickland & Co.,
407 F.2d 881, 160 USPQ 715 (CCPA 1969) (“As a matter of
law, the opposer cannot be damaged, within the meaning of
section 13 of the statute, by the issuance to the applicant
of a second registration where applicant already has an
existing registration of the same mark for the same
goods.”). Because the prior uses and the applied-for mark
do not create the same commercial impression, such that the
Ser. No. 77455710
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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.7
CONCLUSION
Although we find that there is no per se rule
excluding a large-size mark from registration on the
Principal Register, applicant has not shown that the design
in the application is inherently distinctive. In making
this determination, we have considered the commercial
impression created by the mark, the relevant practice in
the industry, and any distinctiveness in determining
whether applicant’s applied-for design would be perceived
as a mark or merely as ornamentation for the goods. We
also find that applicant has not shown that its prior use
is of the same mark such as to show that the design in the
application would be regarded by consumers as a trademark.
Accordingly, without a showing of acquired distinctiveness,
we find that the design in the application would be
perceived by consumers as merely ornamental.

7 Alternatively, applicant argues that the ornamentation refusal
is premature in this intent-to-use application. However, the
Board has found that such refusal may be made if a well-defined
drawing is ornamental “on its face.” In re Right-On Co., 87
USPQ2d at 1157.
Ser. No. 77455710
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Decision: The refusal to register is affirmed.