Westchester Women's Bar Association

Using Secondary Source to Show a Mark Functions as a Trademark

Secondary source arises once there is a refusal on grounds that the subject matter is merely ornamental or decorative, and therefore does not function as a trademark under sections §§1, 2 and 45 of the Trademark Act. Generally, ornamentation refusals apply to trademarks and not service marks. If the average consumer would view a feature as ornamentation, not as a source identifier, the USPTO will not register the mark in the pending application. However, this is not a black and white issue. Instead ornamental matter can be categorized along a continuum, and in some instances will be allowed registration on the Principal Register. See In re Paramount Pictures Corporation, 213 U.S.P.Q. 1111, 1114 1982 WL 52018 (TTAB 1982), where it was held that matter that serves primarily as a source indicator, due to it being inherently distinctive or acquiring distinctiveness can be registered as a trademark, even if it is incidentally decorative or ornamental. For overcoming refusals based on ornamentation grounds, see our web page entitled, How To Prevail On A Refusal Based On Ornamentation.

See also, a recent case decided by the Trademark Trial and Appeal Board (the "TTAB" or the "Board"), Disorderly Kids, LLC v. Roman Atwood, Cancellation No. 92062027 (November 28, 2018) [not precedential], where the mark was allowed to register on the Principal Register, although incidentally ornamental. In that case, the proposed mark was SMILE MORE for shirts, stickers, backpacks and retail store services featuring clothing. The TTAB dismissed the Petition attempting to cancel the SMILE MORE mark for failing to function as a trademark. The Board admitted that the specimens submitted to support the registration for SMILE MORE used the mark in an "ornamental manner". However, this case stood apart from other similar uses in an ornamental manner for a few reasons. First, the registrant aggressively policed the mark SMILE MORE sending out fifty Cease & Desist letters in two years, which resulted in thousands of infringing items being removed from the Internet. Second, the registrant properly used the mark in association with its services for an online retail store and for a YouTube Channel. The Board concluded that the mark used on the goods conveyed to the public a secondary source.

To prove secondary source in a trademark matter, the applicant must show: (1) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on use in commerce under § 1 of the Trademark Act; (2) ownership of a U.S. registration on the Principal Register of the same mark for other goods or services based on a foreign registration under § 44(e) of the Trademark Act, if an affidavit of use under §8 of the Trademark Act has been accepted; (3) non-ornamental use of the mark in commerce on other goods or services; or (4) ownership of a pending use-based application for the same mark, used in a non-ornamental manner for other goods or services. It is not sufficient to show ownership of an intent-to-use application for which no allegation of use has been filed.

In the Roman Atwood case, the petitioner alleged that there was widespread use of SMILE MORE for related goods and services. However, the Board did not find widespread ornamental use of the mark, and thus the public would not be accustomed to perceiving the phrase as decorative or ornamental. In fact, the Board discovered the opposite that the phrase SMILE MORE used in connection with the goods and services in the registration indicated a single origin and source, that of Roman Atwood. The Board found the six ornamental uses of the mark to be a very small number, and not persuasive. The TTAB stated that in fact, half of those uses had ceased using the mark in commerce once the registrant sent Cease & Desist demands. The Board dismissed the Petition to Cancel the registration. If you have questions as to whether your mark functions as a trademark, and if it could be refused on grounds of ornamentation, please contact the firm for a courtesy consultation.

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