Texas Instruments Inc.

Trademark Trial and Appeal Board

Jul 21, 2004

No. 76233338 (T.T.A.B. Jul. 21, 2004)

Mailed:
21 July 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Texas Instruments Incorporated
________
Serial No. 76233338
_______
Gary C. Honeycutt of Navarro IP Law Group, P.C. for Texas
Instruments Incorporated.
Kevon L. Chisolm, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Simms, Hanak, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 30, 2001, Texas Instruments Incorporated
(applicant) applied to register the mark shown below on the
Principal Register:
The identification of goods and services was
ultimately amended to read as follows:
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76233338
2
Computer software used for programming digital signal
processors in International Class 9
Computer services, namely providing search engines for
obtaining data on a global computer network in
International Class 42.
The application (Serial No. 76233338) alleges a date
of first use and first use in commerce for the goods of
January 1, 1998 and for the services of July 1, 1997. The
application indicates: “The mark consists of a banner. The
first part is shorter and is black. The second part is
longer and is red.” The application was amended to
indicate that applicant “is claiming color as a feature of
the mark.”
The examining attorney ultimately refused to register
applicant’s design because it fails to function as a mark
under the provisions of Sections 1, 2, 3, and 45 of the
Trademark Act. 15 U.S.C. §§ 1051, 1052, 1053, and 1127.
After the examining attorney made the refusal final,
applicant filed a notice of appeal.
In this case, the examining attorney maintains that
applicant’s “mark is nothing more than a decorative
background for the packaging and website.” Examining
Attorney’s Brief at unnumbered page 6. The examining
attorney also points out that “on one page the banner is
black and red. On another page, the banner is black, red,
Ser No. 76233338
3
yellow and white. Finally, on yet another web page, the
banner is gold, light blue, dark yellow and light yellow.
The use of many different colors [in] combinations makes it
very difficult for any color to stand out. It is quite
evident that there is little or no attempt to promote the
color combination of black and red as a trademark and
service mark for the goods and services.” Examining
Attorney’s Brief at unnumbered page 8. On the other hand,
applicant maintains that its “mark has always been, since
the time of its adoption and first use, an inherently
distinctive mark that has achieved instant recognition as a
trademark denoting the origin of Applicant’s goods and
services.” Applicant’s Brief at 8.
Inasmuch as applicant seeks registration on the
Principal Register and it has not alleged that its design
has acquired distinctiveness, the only issue in this case
is whether its design is inherently distinctive.
[T]he question of inherent distinctiveness rests on
whether the public in the relevant market would view
Pacer’s adhesive container cap as a source-identifier.
See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205, 210 (2000) (stating that a mark is
inherently distinctive if its “‘intrinsic nature
serves to identify a particular source’” (quoting Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768
(1992)); Tone Bros., Inc. v. Sysco Corp., 28 F.3d
1192, 1206 (Fed. Cir. 1994) (Trade dress is inherently
distinctive if it “is of such a design that a buyer
will immediately rely on it to differentiate the
product from those of competing manufacturers”).
Ser No. 76233338
4
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629,
1631 (Fed. Cir. 2003).
The Federal Circuit, the CCPA, and the board have
looked to the following factors to determine whether a
design is inherently distinctive:
1. Whether the design was “a ‘common’ basic
shape or design, whether it was unique or
unusual in a particular field,
2. whether it was 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 goods, or
3. whether it was capable of creating a
commercial impression distinct from the
accompanying words.”
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977)(footnotes omitted).
See also Pacer Technology, 67 USPQ2d at 1631; 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”).
Applicant has described its design as “a long
rectangle that is divided into two colors (hereinafter the
‘Banner’). The first one-fourth of the Banner (the left
side) appears in black and the rest of the Banner (the
right side) appears in red.” Applicant’s Brief at 1.
Ser No. 76233338
5
“Applicant also prominently displays its name ‘Texas
Instruments’ on or near the Banner.” Applicant’s Brief at
8.
The case law suggests that simple background designs
such as applicant’s here have not been held to be
inherently distinctive and they have been registered on the
Principal Register only after a showing of acquired
distinctiveness, which applicant has not submitted in this
case. In re E.J. Brach & Sons, 256 F.2d 325, 118 USPQ 308,
310 (CCPA 1958) (“We do not think that the average consumer
of applicant’s product will regard its background frills
and curves as an unmistakeable, certain, and primary means
of identification pointing distinctly to the commercial
origin of such product”); In re Anton/Bauer Inc., 7 USPQ2d
1380, 1383 (TTAB 1988) (Applicant’s parallelogram
background design not shown to have acquired
distinctiveness); In re Haggar Company, 217 USPQ 81, 84
(TTAB 1982) (Applicant’s black rectangle with a serrated
edge not inherently distinctive but registrable under
Section 2(f)). Even modifications to these basic designs
have not been held to be inherently distinctive. In re
Wendy’s International, Inc., 227 USPQ 884, 886 (TTAB 1985)
(“[A] review of the pertinent case law where designs were
held to be inherently distinctive shows those designs to
Ser No. 76233338
6
be, in our view, much more unique and eye-catching than the
‘domed rectangle’ involved herein”). Therefore,
applicant’s basic banner design is a simple geometric shape
that would not be inherently distinctive. Also, the fact
that applicant uses a two-color banner on its website or on
packaging for its goods hardly seems inherently
distinctive. In re David Crystal, Inc., 296 F.2d 771, 132
USPQ 1, 2 (CCPA 1961) (“[U]nless the design is of such
nature that its distinctiveness is obvious, convincing
evidence must be forthcoming to prove that in fact the
purchasing public does recognize the design as a
trademark.” Applicant’s mark for two parallel red and blue
bands for socks not registrable). Applicant’s black and
red banner is a common, basic shape and the color is hardly
eye-catching. A review of the specimens and case law
indicates that applicant’s design is a simple design that
would at best be viewed as a mere refinement of
ornamentation used on packaging, advertising, and websites
for the goods and services.
“The question whether the subject matter of an
application for registration functions as a mark is
determined by examining the specimens along with any other
relevant material submitted by applicant during prosecution
Ser No. 76233338
7
of the application.” In re The Signal Companies, Inc., 228
USPQ 956, 957 (TTAB 1986).
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216
(CCPA 1976) (emphasis in original, footnote omitted).
Applicant’s own specimens speak eloquently to the non-
distinctiveness of its design. When the specimens are
viewed, it is difficult to see that the design serves
anything other than a decorative function. In a black-and-
white world, the addition of the color red would perhaps be
unusual. But in a world of color printing, the presence of
the color red on a website or on packaging for software
would hardly be noteworthy. The evidence does not support
a conclusion that applicant’s design on a website or a
product’s packaging is so inherently distinctive that
prospective customers immediately recognize it as a
trademark. David Crystal, Inc., 132 USPQ at 2.
Applicant’s design is at most a simple refinement of a
common rectangle design. In re F.C.F. Inc., 30 USPQ2d
1825, 1828 (TTAB 1994)(footnote omitted) (“While, at best,
Ser No. 76233338
8
applicant’s rose design may be unique, in the sense that it
is unlike any other floral design, and may serve along with
the color red of its packaging as an aid to finding
applicant’s ‘CLARINS’ line of cosmetics, its rose design
appears to be no more than a mere refinement of a basic,
relatively common and well-known form of decoration or
ornamentation for cosmetics packaging and would be so
regarded by the public”).
The final Seabrook factor is whether the design is
capable of creating a commercial impression distinct from
the words. Applicant admits that it “prominently displays
its name ‘Texas Instruments’ on or near the Banner.”
Applicant’s Brief at 8. Applicant’s specimens confirm this
usage. It is not clear how applicant’s design would be
separated from applicant’s trademarks such as TEXAS
INSTRUMENTS that normally appear in the design.
Applicant’s design is not similar to the design in its
cited case of In re National Institute for Automotive
Service Excellence, 218 USPQ 744, 745 (TTAB 1983). In that
case the board found that the applicant’s “meshed gears
design is not a common basic shape; it creates a visual
impact separate and apart from the words superimposed
thereon (indeed, at a distance the words may be hard to
read but the design stands out and provides a means of
Ser No. 76233338
9
ready recognition); it is at most suggestive in nature.”
Furthermore, inasmuch as applicant does not consistently
use the same color pattern on its website, it is not clear
why potential users would recognize the particular pattern
of this application as a trademark.
Applicant also relies on the case of Knitwaves Inc. v.
Lollytogs Ltd., 71 F.3d 996, 36 USPQ2d 1737 (2d Cir. 1995).
In its Reply Brief (p.1, emphasis omitted), applicant cites
this case for the proposition that “a mark is inherently
distinctive, and source-identifying, unless it is shown to
have another function which is incompatible or inconsistent
with trademark usage.” In the Knitwares case, the Second
Circuit reversed a decision in favor of the party claiming
trademark infringement for a sweater design on the
trademark issue because “the design was not primarily
intended as source identification.” 36 USPQ2d at 1747.
The Knitwares case does not address, much less support
applicant’s argument that its common, decorative design is
inherently distinctive.
One final point that applicant raises in its brief
(page 6) is “that there are a large number of registrations
consisting of simple color designs.” Applicant then refers
to “selected records from the first 300 records reviewed”
Ser No. 76233338
10
attached to its brief. Id. at 6 n.2.1 The examining
attorney responded by pointing out that each case must be
decided on its own merits and that “those registrations are
totally different because they included colors, words, and
designs, not just color and a design.” Examining
Attorney’s Brief at 8. We add that even “if some prior
registrations had some characteristics similar to Nett
Designs' application, the PTO's allowance of such prior
registrations does not bind the Board or this court.” In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). In addition, a review of the
registrations that applicant has attached to its brief
reveals that many of these registrations are on the
Supplemental Register or registered on the Principal
Register under the provision of Section 2(f). Inasmuch as
the refusal here is simply that applicant’s design is not
inherently distinctive, these registrations would support
the position that applicant’s design is not inherently
distinctive and that it could not be registered without a
showing that the design has acquired distinctiveness.
1 In his response, the examining attorney refers globally to
“prior registrations cited by the applicant in its Office Action
response, dated September 5, 2002.” At this stage, it is not
clear what registrations were submitted on September 5, 2002,
but, inasmuch as the examining attorney has not specifically
objected to the registrations attached to applicant’s brief, we
will consider them.
Ser No. 76233338
11
In this case involving applicant’s red and black
banner design, the record leads us to conclude that buyers
would not “immediately rely on it to differentiate the
product [and services] from those of competing” producers.
Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 31 USPQ2d
1321, 1331 (Fed. Cir. 1994). Therefore, it is not
inherently distinctive.
Decision: The refusal to register the applied-for
design on the Principal Register on the ground that it does
not function as a mark is affirmed.