In Re Lululemon Athletica Canada, Inc.

105 U.S.P.Q.2d 1684 (TTAB 2013)

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Nature of the Case

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Facts

The mark consists of a single line in a wave design that is applied to the front of a garment. The 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 P's design is merely ornamental as applied to the goods being offered. After receiving a final refusal, P responded by, among other things, amending the filing basis to rely instead on Sections 1(b) and 44(e). P 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 confirmed the refusal. P made a timely appeal of the refusal. P 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 large marks on their clothing shows that consumers would perceive P's design as being a mark rather than as merely ornamental. D argues that the design 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 P 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).