Right-On Co., Ltd.

Trademark Trial and Appeal Board

Apr 16, 2008

No. 79014939 (T.T.A.B. Apr. 16, 2008)

Oral Hearing: Mailed:
December 18, 2007 April 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Right-On Co., Ltd.
________

Serial Nos. 79014936; 79014939; 790150941
_______

James A. Oliff and William P. Berridge of Oliff & Berridge,
PLC for Right-On Co., Ltd.

Gina M. Fink, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Bucher, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Right-On Co., Ltd. has filed applications to register
as trademarks on the Principal Register the pocket-
stitching designs shown below for goods identified as

1 The above-noted appeals for application Serial Nos. 79014936
and 79014939 were consolidated by Board order on May 23, 2007,
for purposes of briefing. In addition, inasmuch as the issues
raised by the two consolidated appeals are similar to the appeal
in application Serial No. 79015094, the Board is addressing them
in a single opinion. Citations to the briefs refer to the briefs
filed in application Serial No. 79014936, unless otherwise noted;
however, we have, of course, considered all arguments and
evidence filed in each case.

THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 79014936, 79014939 and 79015094
2
“clothing, namely, jeans, t-shirts, polo shirts, sweat
shirts, sweaters, gloves and socks; belts for clothing;
footwear, namely, sports shoes, mountaineering boots and
sandals; headgear for wear, namely, caps and hats” in
International Class 25.

The first two designs, which are the subjects of
application Serial Nos. 79014936 and 79014939, include the
following description:
The mark consists of a stitching design on side-
by-side pockets. The solid lines represent
stitching. The shape of the pockets is not
claimed as part of the mark. The dotted lines
Serial Nos. 79014936, 79014939 and 79015094
3
are not claimed as a feature of the mark, but
rather show the mark’s position on the goods.

The third design, which is the subject of application
Serial No. 79015094, includes the following description and
color claim:
The mark consists of a stitching design on side-
by-side pockets. The shape of the pockets is not
claimed as part of the mark. The pockets are
blue; the stitching is gold. The color(s) blue
and gold is/are claimed as a feature of the mark.

All three applications were filed on July 8, 2005,
based on a request for extension of protection under
Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a).
The examining attorney refused registration of
applicant’s marks under the provisions of Sections 1, 2 and
45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127,
on the ground that the pocket-stitching designs are
“decorative or [] ornamental feature[s] of the goods that
are not inherently distinctive and thus would not be
perceived as [] mark[s] by the purchasing public without
further evidence of acquired distinctiveness.” Br. p. 1.
In addition, although the examining attorney noted that the
pocket-stitching designs were “capable of acquiring
distinctiveness,” the examining attorney indicated that
Serial Nos. 79014936, 79014939 and 79015094
4
applicant “elected not to attempt a claim of acquired
distinctiveness under Section 2(f).”2
When the refusals were made final, applicant appealed
and concurrently requested reconsideration. Upon denial of
the requests for reconsideration, the Board resumed these
proceedings. The appeals have been fully briefed and an
oral hearing was held on December 18, 2007.
Summary of Examining Attorney’s Arguments and Evidence
In maintaining the refusals that the pocket-stitching
designs fail to function as marks, the examining attorney
contends that “applicant’s stitching designs do not
incorporate any elements that look any different than any
other decorative stitching patterns, and thus would not be
viewed as inherently distinctive. The practices of the
trade lead to the conclusion that the applicant’s mark is
ornamental as evaluated under Sections 1, 2 and 45, but
capable of acquiring distinctiveness. Mere stitching on
jeans pockets is not inherently viewed as a trademark.”
Br. pp. 3-4. As to the color element in application Serial
No. 79015094, she argues that “applicant’s ‘gold’ stitching
on a blue background on side-by-side pockets is hardly

2 Amendment to the Supplemental Register is not available for
applications filed under Section 66(a) of the Trademark Act.
Extension of protection shall be refused to any mark not
registrable on the Principal Register. Trademark Act §68(a)(4),
15 U.S.C. §1141h(a)(4).
Serial Nos. 79014936, 79014939 and 79015094
5
unique. The ‘blue background’ of the applicant’s
potentially/likely blue jeans pockets couldn’t be more
‘common.’ The use of gold stitching is also a well-used
thread color. Additionally, the use of thread of a
different color than the ‘background’ color would easily be
viewed as ornamental or decorative and not be seen as
unique without further evidence of acquired
distinctiveness.” Br. p. 8 (Serial No. 79015094).
In support of her refusals, the examining attorney
submitted several third-party registrations for pocket-
stitching designs that have been registered on the
Supplemental Register or on the Principal Register based on
a showing of acquired distinctiveness under Section 2(f) of
the Trademark Act. See, e.g., Reg. Nos. 2626917, 3135750
and 3064567 (owned by Abercrombie & Fitch Trading Co.);
Reg. Nos. 1695617 and 3161010 (owned by Guess?, Inc.); and
Reg. Nos. 2835542 and 2857029 (owned by Giorgio Armani
S.P.A.). In addition, the examining attorney submitted
printouts of several web pages retrieved from the Internet
and newspaper articles retrieved from the Nexis database
that “discuss stitching on jeans pockets as a way of
decorating pockets or clothing” which “lead to the
conclusion” that the practices of the trade view stitching
on pockets as ornamental, but capable of acquiring
Serial Nos. 79014936, 79014939 and 79015094
6
distinctiveness. Br. p. 7. See, e.g., patternreview.com
(“Decorative stitching on jeans pockets”); Ohio State
University Extension Fact Sheet, ohioline.osu.edu (“Fashion
detailing is evident in pockets, especially hip pockets.
Pocket shape, top-stitching pattern and other trim ideas
are varied to create interesting and distinctive garment
detail; however, some companies promote plain pocket jeans.
Four- and five-pocket styling dominate the jeans market.”);
and The Capital Times (Madison, Wisconsin October 11, 2005)
(“And the ones that aren’t on sale are those imitating the
premium labels – with an emphasis on more ornamental back
pockets, contrast stitching, softer material, Lycra for a
snug fit, and more importantly, a heftier price tag.”).
Summary of Applicant’s Arguments and Evidence
Applicant contends that “[i]t is common practice in
the trade to use stylized stitching on hip pockets to
distinguish manufacturers, and applicant’s arbitrary
mark[s] serve[] this source-identifying function
notwithstanding any ornamental nature.” Br. p. 3.
Applicant argues that as a result “[c]onsumers have been
conditioned to recognize pocket stitching as source
identifiers.” Br. p. 7. Applicant continues stating that
it “uses its design on side-by-side pockets, where the
pockets are easily seen whether folded on display in a
Serial Nos. 79014936, 79014939 and 79015094
7
store, or worn by a consumer.” Applicant concludes that
“designs in such locations are known to be source
identifiers just as designs or marks located in the breast
area of a shirt are known to be source identifiers, as
conceded by the Examining Attorney.” Br. p. 11.
Applicant asserts that the web pages and newspaper
articles submitted by the examining attorney support its
position, noting for example that one article “states that
department stores and mall-type chains like Gap carry
moderately expensive denim from manufacturers that are
‘imitating the premium labels-with an emphasis on more
ornamental back pockets, contrast stitching, softer
material, lycra for a snug fit, and most importantly, a
heftier price tag.’” Applicant concludes that this article
shows that “stitching designs on jean pockets are so
recognized as a source indicator that moderately famous
labels are attempting to capitalize on the goodwill of
premium labels by using similar stitching designs.” Br p.
10.
In countering the examining attorney’s position that
consumers recognize certain pocket stitching because it has
acquired distinctiveness associated with a particular
designer, applicant states that “the fact that one
stitching design is more famous than another stitching
Serial Nos. 79014936, 79014939 and 79015094
8
design used in the same location in the same way does not
make the less famous design merely ornamental. Rather as
indicated by the Examining Attorney’s stipulation,
consumers will look to such designs as a source indicator,
regardless of whether the source is famous.”3 Br. pp. 4-5.
Finally, applicant argues that its stitching design is
unique in comparison to other marks in the relevant
industry in that its proposed marks, consisting of
“distinctive pocket stitching, which include[] smoothly
curved lines of varying thickness and abrupt points, [are]
easily recognized mark[s].” Br. p. 3.
In support of its position, applicant provided several
third-party registrations for pocket stitching designs
registered on the Principal Register without a showing of
acquired distinctiveness. Applicant particularly relies on
registrations owned by Levi Strauss & Co. (Levi’s) and the
various infringement actions brought by Levi’s against
other third parties because of their use of pocket
stitching designs referred to in a newspaper article
submitted by the examining attorney.4

3 For clarification, we note that the examining attorney did not
“stipulate” that pocket stitching can be inherently distinctive,
but rather that it may be capable of acquiring distinctiveness.

4 We note that the oldest Levi’s registration in the record
Serial Nos. 79014936, 79014939 and 79015094
9
In addition, applicant submitted three of its
registrations for pocket-stitching designs which issued on
the Principal Register without a showing of acquired
distinctiveness.
Discussion
Failure to Function Under Sections 1, 2 and 45
In determining whether a design is inherently
distinctive, we must consider “whether it [is] a ‘common’
basic shape or design, whether it [is] unique or unusual in
a particular field, [or] whether it [is] a mere refinement
of a commonly-adopted and well-known form of ornamentation
for a particular class of goods viewed by the public as a
dress or ornamentation for the goods.” Seabrook Foods,
Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 196 USPQ 289,
291 (CCPA 1977). See also Tone Brothers Inc. v. Sysco
Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1331 (Fed. Cir. 1994);
and In re Glaxo Group Ltd., 53 USPQ2d 1920, 1922 (TTAB
2000) (“In cases involving the alleged inherent
distinctiveness of trade dress, the Board has in the past
looked to Seabrook.”).

issued in 1943 prior to the statutory provisions allowing for
registration based on acquired distinctiveness under Section
2(f).

Serial Nos. 79014936, 79014939 and 79015094
10
Moreover, an inherently distinctive mark is one which
is “by its very nature distinctive or unique enough to
create a commercial impression as an indication of
origin....” In re Raytheon Co., 202 USPQ 317 (TTAB 1979).
While the design may in fact be unique, i.e., it is the
only such design being used, it also must possess an
“original, distinctive and peculiar appearance.” In re
McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140 (CCPA 1960).
We begin by noting that, while the refusals are
directed to all of the goods,5 the examining attorney and
applicant have restricted their arguments to applicant’s
jeans listed in the identification of goods in each
application. Therefore, we make our determination based on
applicant’s jeans and note that we need not address the
other goods. Cf. In re Analog Devices, Inc., 6 USPQ2d 1808
(TTAB 1988) (it is well settled that where a mark may be
merely descriptive of one or more items of goods in an
application but may be suggestive or even arbitrary as
applied to other items, registration is properly refused if
the subject matter for registration is descriptive of any
of the goods for which registration is sought).

5 Notice of Provisional Refusal (January 31, 2006); TMEP
§1904.03(b) (5th ed. 2007).

Serial Nos. 79014936, 79014939 and 79015094
11
It is clear from the record that the application of
stitching designs to pockets is a common practice in the
relevant trade, i.e., the jeans market. The crux of the
dispute here is the legal meaning to be attributed to this
practice. The examining attorney maintains that under the
case law this “common practice” supports an ornamentation
refusal, whereas applicant maintains that this set of facts
supports a finding that such stitching is recognized as a
trademark.
Inasmuch as pocket stitching is a “commonly-adopted
and well known form of ornamentation” for jeans, a “mere
refinement” cannot be inherently distinctive. However,
such stitching is capable of acquiring distinctiveness and
the record shows the extent to which some purveyors of
jeans tout their stitching and assert it as a source
identifier.
We do not find the evidence of record persuasive of a
different result. While applicant is correct in noting,
for example, that the screenshots from wikipedia.com show
the “great diversity of pocket stitching designs currently
being used in the marketplace,” it is not clear that these
designs are acting as source identifiers rather than
ornamentation or that, if they are source identifiers, that
they came to be such through acquired distinctiveness.
Serial Nos. 79014936, 79014939 and 79015094
12
Considering applicant’s pocket-stitching designs
within these legal parameters, we find that they are not
“unique or unusual” but rather are in the category of a
“common basic shape or design” and are at most “a mere
refinement of a commonly-adopted and well-known form of
ornamentation” for jeans. Moreover, the pocket-stitching
designs on the side-by-side pockets are mirror images,
which serve to create the appearance of a single decorative
design. In the case of jeans, where the placement spans
the back of the jeans, the mirror image enhances the
ornamental effect.
Applicant’s argument that its designs are not common
is not supported by the record. There are a multitude of
variations of arches, checks, swoops, waves and other
linear designs registered or in use on jeans pockets. They
are in no way “elaborate and unique.” With regard to the
additional elements of color in application Serial No.
79015094, we find that rather than providing a unique
design, the blue and gold combination simply adds to the
ornamentation in a non-unique manner.
Further, we must consider the size, location and
dominance of the designs in determining the commercial
impression of designs. In re Dimitri’s Inc., 9 USPQ2d
1666, 1667 (TTAB 1988). As stated in the Trademark Manual
Serial Nos. 79014936, 79014939 and 79015094
13
for Examining Procedure, “[a] small, neat and discrete word
or design feature (e.g., small design of animal over pocket
or breast portion of shirt) may be likely to create the
commercial impression of a trademark, whereas the larger
rendition of the same matter emblazoned across the front of
a garment (or tote bag, or the like) may be likely to be
perceived merely as a decorative or ornamental feature of
the goods. However, a small, neat, and discrete word or
design feature will not necessarily be perceived as a mark
in all cases.” TMEP §1202.03(a). First, there is no per
se rule that a “neat and discrete” design is inherently
distinctive. Moreover, we do not find applicant’s designs
which span two pockets in a mirror image to be “neat and
discrete,” but rather more in the category of matter that
is “emblazoned” across the garment.
In view thereof, purchasers and prospective customers
for applicant’s goods would be unlikely to regard any of
these designs as identifying and distinguishing applicant’s
jeans and indicating their source, without a showing that
the designs had acquired distinctiveness.
As to the third-party registrations, each case must be
decided on its own set of facts and the existence of
registrations for other designs does not entitle applicant
to registration of the designs sought to be registered
Serial Nos. 79014936, 79014939 and 79015094
14
here. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001); and In re Inter State Oil
Co., Inc., 219 USPQ 1229 (TTAB 1983). In any event, the
record includes fourteen registrations issued on the
Principal Register and seventeen issued on the Supplemental
Register or registered under Section 2(f). Such a record
provides little insight other than to indicate that pocket-
stitching designs have sometimes been found to be
inherently distinctive and sometimes found not to be
inherently distinctive.
With regard to applicant’s registrations issued under
Section 66(a), we note that in the case of intent-to-use
applications filed under Section 1(b) of the Trademark Act,
15 U.S.C. §1051(b), examining attorneys are instructed to
wait until a specimen of use has been filed, either with an
amendment to allege use or statement of use, before issuing
an ornamentation refusal in order to better understand the
nature of the mark and how it will appear on the goods or
packaging. See TMEP §1202.03(e). Applications filed under
Section 66(a) are also filed and initially examined without
a specimen of use. However, unlike applications filed
under Section 1(b), applications based on Section 66(a) of
the Trademark Act do not require the submission of a
specimen of use prior to registration. Thus, applicant’s
Serial Nos. 79014936, 79014939 and 79015094
15
registrations may have issued with the examining attorney
not being aware of the way the mark would be used or
perceived.
Section 68(a)(4) of the Trademark Act provides that
“[e]xtension of protection shall be refused to any mark not
registrable on the Principal Register,” and the Trademark
Manual of Examining Procedure instructs that “[u]nder
Section 68(a) of the Trademark Act, a request for extension
of protection will be examined under the same standards as
any other application for registration on the Principal
Register.” TMEP §1904.02(a). Therefore, in order to
properly examine applications under Section 66(a), it is
appropriate for examining attorneys to issue an
ornamentation refusal if the mark is decorative or
ornamental on its face as depicted on the drawing page and
described in the description of the mark.6
Decision: The refusals to register the stitching
design marks in each application on the grounds that they
constitute mere ornamentation and fail to function as marks
are affirmed.

6 We further note that examining attorneys may request
information as to the intended use of the mark to better
understand how a proposed mark may be perceived. Trademark Rule
2.61(b), 37 C.F.R. §2.61(b).