Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE PRO-LINE CORPORATION
Serial No. 74/174,721
August 16, 1993
Jerome J. Norris of Antonelli, Terry, Stout & Kraus for applicant.
Andrew D. Lawrence
Trademark Examining Attorney
Law Office 15
(Paul Fahrenkopf, Managing Attorney)
Before Sams, Rice and Quinn
Opinion by Quinn
An application has been filed to register the designation shown below
for "clothing, namely t-shirts, sweatshirts and shirts." [FN1]
The Trademark Examining Attorney has refused registration under Sections 1, 2 and 45 of the Act on the ground that the matter sought to be registered, as used on the goods, is ornamental and does not function as a trademark to indicate the source or origin of the goods. [FN2]
When the refusal was made final, applicant appealed. Applicant and the Examining Attorney filed appeal briefs. Applicant neither filed a reply brief nor requested an oral hearing.
It is well settled that matter which serves as part of the aesthetic ornamentation of goods, such as T-shirts, sweatshirts and shirts, may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function. In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) and cases cited therein. As the Board stated in In re Olin Corporation, 181 USPQ 182, 182-183 (TTAB 1973), where applicant sought to register, for T-shirts, an arbitrary design which was used by being applied to the face of the T-shirts, but which had previously been registered by applicant for skis:
It is a matter of common knowledge that T-shirts are "ornamented" with various insignia, including college insignias, or "ornamented" with 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. It is not imaginable that Columbia University will be the source of an N.Y.U. T-shirt. Where the shirt is distributed by other than the university the university's name upon the shirt will indicate the sponsorship or authorization by the university.
In the case before us, the T-shirt is ornamented with applicant's trademarks, and considering the nature of T-shirts, that particular ornamentation can serve as an indication of a secondary source of origin. The matter sought to be registered is an arbitrary symbol and can and does function as a trademark. As used on the T-shirts, we conclude that the mark serves as an identifier of a secondary source and as such is registrable.
*2 Such matter may also be found to be registrable if applicant submits other evidence (such as evidence of promotion of the matter as a mark, survey evidence demonstrating purchaser perception of the matter as a mark, etc.) showing that purchasers recognize that matter as an indication of the source of the goods. See, for example: In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (CCPA 1961).
Where, as here, an alleged mark serves as part of the aesthetic ornamentation of the goods, the size, location, dominance and significance of the alleged mark as applied to the goods are all factors which figure prominently in the determination of whether it also serves as an indication of origin.
In the present case, the phrase BLACKER THE COLLEGE SWEETER THE KNOWLEDGE appears in large, bold letters centered on the shirt, filling virtually the entire upper half of the shirt. The prominent display of the phrase immediately catches the eye. The phrase essentially conveys a message or opinion about the value of an education at any of the institutions of higher learning which are listed in small type immediately below the phrase. It is our view that the phrase sought to be registered is a primarily ornamental slogan and, therefore, is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's shirts. See: Damn I'm Good Inc. v. Sakowitz, Inc. et al., 212 USPQ 684 (S.D.N.Y.1981); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984); and In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984).
The mere fact that applicant's phrase appears on the shirts does not make it a trademark. Not every word, name, phrase, symbol or design, or combination thereof which appears on a product functions as a trademark. In re Morganroth, 208 USPQ 284 (TTAB 1980). Mere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark. In re Remington Products Inc., 3 USPQ 1714, 1715 (TTAB 1987). In the present case the shirts also display PRO-LINE. This designation is more likely to be viewed as the source indicator for applicant's shirts, whereas the phrase BLACKER THE COLLEGE SWEETER THE KNOWLEDGE would be viewed merely as an informational message or slogan devoid of trademark significance. See: In re Manco Inc., 24 USQP2d 1938 (TTAB 1992). There simply is no probative evidence of record that purchasers perceive BLACKER THE COLLEGE SWEETER THE KNOWLEDGE as an indicator of source.
In this connection, applicant places significant reliance on the fact that PRO-LINE prominently appears twice on the shirts, next to and also below the phrase sought to be registered. Applicant essentially argues that the appearance of PRO-LINE on the shirts makes it likely that the phrase it seeks to register will be perceived as an indicator of source. Applicant argues as follows:
*3 [The shirts] bearing the mark BLACKER THE COLLEGE SWEETER THE KNOWLEDGE have applicant's recognized trademark PRO-LINE emblazoned on them, and this fact leaves no doubt as an indicator of source in two conspicuous places.... even where the mark sought to be registered constitutes a functional component, placement of a recognized trademark on a T-shirt may serve primarily as an indicator of source sufficient to justify registration of the functional component. Since, the T-shirts and the sweatshirts on which the mark sought to be registered is used in connection with the widely publicized and recognized PRO-LINE mark of applicant, the mark sought to be registered is properly registrable under the Trademark Act.... even if one were to consider the expression "BLACKER THE COLLEGE SWEETER THE KNOWLEDGE" as an ornamentation, that ornamentation is accompanied by two illustrations of applicant's mark PRO-LINE, and as such, it would not be imaginable under these circumstances that anyone other than PRO-LINE is the source of the mark sought to be registered.
We are not persuaded by applicant's argument. Applicant seeks to register the phrase BLACKER THE COLLEGE SWEETER THE KNOWLEDGE standing alone; PRO-LINE is not part of applicant's alleged mark sought to be registered as shown on the drawing. Although the specimens show the phrase BLACKER THE COLLEGE SWEETER THE KNOWLEDGE and PRO-LINE appearing together on the same shirt, there is nothing to prohibit applicant from placing the phrase on shirts without PRO-LINE also appearing thereon. And we must determine the question of whether the matter asserted for registration functions as a mark without reference to any other mark that may, or may not, appear on the goods.
In assessing the merits of this particular argument, we are not unmindful of a prior Board decision in the case of In re Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985). [FN3] In that case, applicant sought to register a stylized checkered flag design for clothing and clothing patches. The specimens were photographs of shirts, hats and patches which depicted the design sought to be registered together with the expression WATKINS GLEN or THE GLEN IS BACK! The record showed that applicant owned and operated a stadium adapted to professional car racing and that the clothing items were sold ancillary to the operation of the automobile race track. Applicant also owned a registration of the mark WATKINS GLEN and the stylized checkered flag design ("WATKINS GLEN" disclaimed) for organizing and conducting vehicular racing contests in a stadium. In reversing the refusal to register the Board articulated its reasons as follows:
While there is no question but that the design sought to be registered performs an ornamented [sic] function as applied to applicant's clothing items and patches for clothing, the record supports a finding that said design is an indicia of source inasmuch as the design comprises the dominant, indeed, the only nondisclaimed portion of applicant's prior service mark registration. As used in connection with applicant's patches and clothing items, the specimens show the design prominently displayed along with either the legend "THE GLEN IS BACK!" or "WATKINS GLEN." We do not think the appearance of these legends along with the design detracts from the design's registrability since we believe said design creates a commercial impression, separate and distinct from the wording. While the design somewhat simulates a checkered flag which is a common symbol in the auto racing field, the design sought to be registered, in our view, is highly stylized and unique. We think, therefore, that the subject matter sought to be registered is likely to be perceived as not only an attractive ornamental design but also as an indication of origin.
*4 We think the design, being recognized as a mark indicating origin in applicant with respect to applicant's services of organizing and conducting auto races, comes within the purview of the Olin case, supra. As stated previously, ornamental matter which may additionally perform a source- indicating function is registrable if it is found to be a trademark of applicant. We disagree with the Examining Attorney that this proposition requires, in the present case, that applicant seek registration of "WATKINS GLEN" and design rather than the design itself, where, as here, such design is distinctive and engenders a commercial impression by itself. Accordingly, we conclude that the refusal of registration is not well taken.
The Board in In re Watkins Glen found the checkered flag design inherently distinctive, in and of itself, for the services of conducting auto races and, under the Olin case, found that the mark was, likewise, distinctive for applicant's collateral products, namely clothing items. Here, there is no evidence that the slogan BLACKER THE COLLEGE SWEETER THE KNOWLEDGE is distinctive for any other goods or services, such that the distinctiveness carries over to use on collateral products such as clothing. Because the phrase sought to be registered is in the nature of a primarily ornamental slogan, it is not inherently distinctive. Consumers are likely to perceive the slogan as primarily ornamental and not as a source indicator.
Decision: The refusal to register is affirmed.
FN1. Application Serial No. 74/174,721, filed June 10, 1991, alleging dates of first use of April 1991.
FN2. The relevant portion of Section 45 reads as follows:
The term "trademark" includes any word, name, symbol, or device, or any combination thereof to identify and distinguish [a person's] goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
FN3. We would add that applicant did not cite this case in support of its argument.