The US Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) affirmed a decision rejecting Lululemon Athletica Canada Inc.’s (Lululemon) trademark application for a large version of its logo as used on the front of hooded sweatshirts, jackets and coats. While the TTAB recognized that the appearance of oversized logos on clothing and fashion items was becoming more frequent and could be protectable, it held that Lululemon failed to provide sufficient evidence to meet the standards for registrability.
On April 23, 2008, Lululemon filed a US trademark application for the following logo which consists of “a single line in a wave design that is applied to the front of a garment,” for use in connection with hooded sweatshirts, jackets and coats (the Wave Design). The PTO refused the application on the ground that the mark was merely decorative or ornamental, and therefore would not be viewed as a trademark by consumers to indicate the source of Lululemon’s goods. Despite several attempts to convince the PTO that the Wave Design was entitled to registration, the PTO upheld its decision, and Lululemon appealed to the TTAB.
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Under US trademark law, a design that is merely ornamental cannot obtain trademark protection unless it is inherently distinctive, has acquired distinctiveness through substantial use and advertising, or has been used or registered in a non-ornamental fashion for other goods and services. An ornamental design is inherently distinctive if it is sufficiently unique such that consumers will recognize it as an indication of source and not merely a decorative element.
In its appeal, Lululemon argued that its Wave Design was inherently distinctive for two reasons. First, Lululemon pointed to several other third-party registrations for oversized marks placed on the front of clothing that the PTO found inherently distinctive, and argued that its mark should be treated similarly. Second, Lululemon asserted that the registration of an almost identical design used on other goods and services provided sufficient grounds to find that the Wave Design was protectable. Lululemon did not submit evidence of acquired distinctiveness.
The TTAB rejected “a per se rule regarding registrability based on the size of a mark on clothing” and, focusing on the overall commercial impression of the mark, upheld the PTO’s decision. The TTAB distinguished Lululemon’s design from other oversized logos, noting that because the Wave Design was simple and resembled piping, it created an overriding commercial impression of ornamentation. Moreover, although Lululemon owned registrations for a similar design used in connection with other goods and services, the TTAB discounted these registrations because the other design was materially different from the Wave Design. Accordingly, the TTAB agreed that Lululemon’s oversized Wave Design was ornamental and therefore not entitled to registration.
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This case highlights the challenges associated with obtaining adequate protection for trademarks used in fashion designs. As fashion companies increasingly incorporate brands and logos into their designs, the use of large versions of these logos may be viewed as ornamental from a trademark standpoint. To help ensure trademark protection, companies should consider using a design consistently across product lines and creating advertising emphasizing the design as a brand.
