Decision Of The Day (actually decided weeks ago): Lululemon's large-scale wave design on garments deemed "merely ornamental"

Posted by Charles Colman

In re Lululemon Athletica Canada Inc., Serial No. 77455710 (T.T.A.B. Jan. 11, 2013) (precedential)



Key excerpts from full TTAB decision (embedded below; hyperlinks and emphasis mine):

"Lululemon Athletica Canada Inc., applicant herein ('applicant'), seeks registration on the Principal Register of the design shown [above] for 'hooded sweat shirts; jackets; coats,' in International Class 25....


[Following an initial rejection of Lululemon's trademark application by the examining attorney, it] did not amend the application to submit a claim . . . that the design has acquired distinctiveness and is [thus] registrable under section 2(f) [of the Lanham Act.]  The examining attorney issued a subsequent final Office action continuing the refusal [on the ground that the purported mark was 'merely ornamental.']


The examining attorney [who issued the Final Office Action sustaining the refusal to register the claimed mark] 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 [with the USPTO]....


In determining whether a design is inherently distinctive or merely ornamental, we [i.e., the TTAB] 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 USPQ2d1152, 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) (finding applied-for matter consisting of large size message and design suggestive of ornamentation)....


In the present case, the examining attorney’s main concern with the design in the application appears to be its size.... 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….


[W]e 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.... [Here,] 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. Accordingly, the overriding commercial impression of this large-size applied-for design is that of ornamentation....


[This conclusion is unchanged by] applicant’s prior uses and registration [of similar insignia, because] the wave design that applicant uses in other contexts is not [identical to the] mark that applicant now seeks to register. Accordingly, these past uses and registration cannot be used by applicant to show that the design in theapplication is distinctive, rather than ornamental....


[Summary of Decision:] 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.


Decision: The refusal to register is affirmed."


Ed.  There is every indication that this case was effectively litigated by Lululemon's counsel.  Still, recall LAW OF FASHION's Q&A with former trademark examiner Roberto Ledesma, who stated: "A mark has to be used in an acceptable trademark manner; otherwise, the USPTO will reject the filing. Acceptable uses include placing the mark on a label inside the collar, or on a hang-tag affixed to the clothing. It is also acceptable to use the mark on the clothing item itself, provided the use is non-ornamental.  An example would be to have the mark appear in the breast-pocket area of a shirt, like the Ralph Lauren 'horseman' logo or the Lacoste alligator design. These are proper trademark uses, as opposed to marks placed across the front of a shirt as a design element; in most instances, specimens of the latter variety will be rejected as showing a merely ornamental use...."  In other words, this was probably going to be an uphill battle for Lululemon from the start.


If you wish to better understand the trademark/trade dress-copyright-design patent distinction, you might start by reviewing LAW OF FASHION's 11/21/12 post, "Design patents 101: Lululemon Athletica Canada and Calvin Klein, Inc. settle infringement lawsuit over yoga pants," LOF's 12/27/10 post, "You're never fully [trade] dressed....", and Professor Sarah Burstein's 12/4/12 guest post, "Is the IDPA a Trojan Horse?"  For a more comprehensive treatment of trade dress protection -- though the TTAB's Lululemon decision specifically declines to address whether the design at issue is a "trademark" or "trade dress" -- there are helpful resources like Gambino & Bartow's Trade Dress: Evolution, Strategy and Practice (Oxford 2012) [publisher unclear]. In the interest of full disclosure, this writer did receive a complimentary copy of the book from his publisher [at the time this post was originally written], Oxford University Press.  But that has nothing to do with LOF's endorsement of the Gambino & Bartow book.

Anyway, as promised, here's the TTAB's full decision in the Lululemon appeal, which can also be viewed on Scribd:



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