This opinion is a
precedent of the TTAB
Mailed: June 25, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
In re Ralph’s Famous Italian Ices Franchise Corp.
Serial No. 90302728
David L. May, Alexis P. Grilli, and Maggie E. Horstman of Nixon Peabody LLP,
for Ralph’s Famous Italian Ices Franchise Corp.
Hai-Ly Lam, Trademark Examining Attorney, Law Office 119,
Brett Golden, Managing Attorney.
Before Lykos, Greenbaum, and Casagrande, Administrative Trademark Judges.
Opinion by Casagrande, Administrative Trademark Judge:
Ralph’s Famous Italian Ices Franchise Corp. (Applicant) seeks registration on the
Principal Register of the following proposed mark for the beverages and confections
(frozen and otherwise) and restaurant services discussed below:
Applicant’s current description of the proposed mark, as amended, reflects that
the proposed mark is used as trade dress, and reads: “The mark consists of a Serial No. 90302728
repeating pattern of alternating blue and white vertical stripes. The repeating
pattern appears on a portion of the surface of the goods, on a portion of the packaging
for the goods, on a portion of the building facades in which the services are offered,
and on displays, marketing and advertising materials associated with the services”
(“current description”).1 The colors blue and white are claimed as features of the
proposed mark.
The application identifies the following goods and services:
Shakes; frozen drinks, namely, milk shakes, in International
Class 29;
Frozen confections; Beverages made of coffee; Beverages with a
coffee base; Coffee-based iced beverages; Frozen drinks, namely,
Italian ices, non-alcoholic frappes; Italian ices, in International
Class 30;
Fruit drinks, in International Class 32;
Alcoholic beverages, except beer; Hard seltzer, in International
Class 33;
Restaurant franchising, namely, offering business management
assistance in the establishment and/or operation of restaurants;
franchise services, namely, offering business management
assistance in the establishment and operation of retail business
establishments featuring Italian ice, ice cream, and frozen drinks,
in International Class 35; and
Restaurant services; restaurant services featuring Italian ice, ice
cream, and frozen drinks; serving food and drinks, in
International Class 43.2
1 See May 17, 2024, Request for Reconsideration, at TSDR 16 (proposing this description); Aug. 16, 2024, Denial of Reconsideration, at TSDR 5 (accepting this description). Please note that any citations to specific pages of prosecution filings will be to .pdf-format versions of the documents as downloaded from the USPTO’s TSDR electronic trademark docketing system. 2 Application Serial No. 90302728 was filed on November 6, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and
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As presented to us for decision, the application stands refused on the following
grounds:
As to all identified classes of goods and services, the
proposed mark fails to function as a trademark and service
mark under Sections 1, 2, 33 & 45 of the Trademark Act, 15
U.S.C. §§ 1051, 1052, 1053 & 1127, because it constitutes
ornamental matter that is not inherently distinctive and
Applicant has failed to prove its claim, which it made in the
alternative, of acquired distinctiveness under Section 2(f),
15 U.S.C. § 1052(f);4 and
As to the Class 35 franchising services only, the specimens
do not show use of the proposed mark in commerce in
connection with the identified services, as required under
Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, and Trademark
Rules 2.34(a)(1)(iv) & 2.56(a), 37 C.F.R. §§ 2.34(a)(1)(iv) &
2.56(a).5
Applicant’s appeal also raises a question about the description of the proposed
mark. During prosecution, Applicant had previously proposed amendments to the
description in response to the Examining Attorney’s objections to prior descriptions.6
In the August 19, 2024, Denial of Reconsideration, the Examining Attorney accepted
first use in commerce since at least as early as 2004 for each class of goods and services. Applicant amended its original identification of goods and services in its September 2, 2021, Response to Nonfinal Office Action.
3 Section 3 of the Trademark Act applies only to the services.
4 By claiming acquired distinctiveness in the alternative, see Feb. 3, 2023, Request for Reconsideration, at TSDR 21, Applicant avoided an implicit concession that its proposed mark is not inherently distinctive. See, e.g., In re Thomas Nelson, Inc., No. 76681269, 2011 WL 481341, at *1 (TTAB 2011).
5 See Dec. 5, 2024, Subsequent Final Office Action. We will note, however, that the Examining Attorney withdrew an initial refusal under Sections 1 and 45 of the Trademark Act that the proposed mark was a “swatch” drawing that sought registration of more than one mark. See May 30, 2024 Non-Final Office Action.
6 See Sept. 2, 2021, Response to Office Action; Aug. 29, 2023, Response to Office Action; May 17, 2024, Request for Reconsideration.
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Applicant’s then-pending amendment to the description, resulting in the current
description.7 Later, however, after Applicant appealed but before it filed its brief,
Applicant requested that the Board remand the application to the Examining
Attorney to consider yet another amendment to the description and to submit
additional evidence in connection with the failure-to-function refusal.8 The Board
found good cause and granted the remand,9 but on remand the Examining Attorney
rejected the proposed amendment.10 In its appeal brief,11 Applicant, despite the
current description having been deemed acceptable by the Examining Attorney,
contests the rejection of its latest attempt to amend the written description of the
mark.
After the Examining Attorney filed a brief,12 Applicant filed a reply.13 The appeal
is now ready for decision.
For the reasons set forth below, we:
(1) reverse the Class 35 franchising services specimen refusal;
(2) accept Applicant’s proposed further amendment to the description of the
proposed mark; but
7 See Aug. 19, 2024, Denial of Reconsideration, at TSDR 5.
8 See 7 TTABVUE. Please note that references to the briefs and appeal record cite to the Board’s TTABVUE electronic docket system. The number preceding “TTABVUE” represents the docket number assigned to the cited filing in TTABVUE and any number immediately following “TTABVUE” identifies the specifically-cited page(s), if any.
9 See 8 TTABVUE.
10 See 9 TTABVUE.
11 See 11 TTABVUE.
12 See 13 TTABVUE.
13 See 14 TTABVUE.
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(3) affirm the refusal to register the proposed mark as to all goods and services
because (i) the evidence shows that it is ornamental matter that is not
inherently distinctive and (ii) Applicant has failed to prove its alternative
claim that it has acquired distinctiveness.
ANALYSIS
I. The Class 35 specimen refusal
We first address the Class 35 specimen refusal under Sections 1 and 45 of the
Trademark Act because, if we agree with this partial refusal, we need not assess the
distinctiveness of the proposed mark as to these services. The Class 35 services
identified are:
Restaurant franchising, namely, offering business management
assistance in the establishment and/or operation of restaurants;
franchise services, namely, offering business management
assistance in the establishment and operation of retail business
establishments featuring Italian ice, ice cream, and frozen drinks.
The term “service mark” means “any word, name, symbol, or device, or any
combination thereof … used by a person … to identify and distinguish the services of
one person … from the services of others and to indicate the source of the services
….” Trademark Act Section 45, 15 U.S.C. § 1127. Under Section 45, a service mark is
used in commerce “when it is used or displayed in the sale or advertising of services
and the services are rendered in commerce.” Our rule governing specimens provides:
“A service mark specimen must show the mark as used in the sale of the services,
including use in the performance or rendering of the services, or in the advertising of
the services. The specimen must show a direct association between the mark and the
services.” Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2); see also In re WAY Media,
Inc., No. 86325739, 2016 WL 3566131, at *1 (TTAB 2016).
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“[I]n assessing the specimens, consideration must be given not only to the
information provided by the specimen itself, but also to any explanations offered by
Applicant clarifying the nature, content, or context of use of the specimen that are
consistent with what the specimen itself shows.” In re Pitney Bowes, Inc., No.
86502157, 2018 WL 360241, at *3 (TTAB 2018) (citing In re DSM Pharms., Inc., No.
78373640, 2008 WL 2385957, at *2 (TTAB 2008) (“In determining whether a
specimen is acceptable evidence of service mark use, we may consider applicant’s
explanations as to how the specimen is used, along with any other available evidence
in the record that shows how the mark is actually used.”)).
Applicant argues that its second substitute specimens, submitted in its May 17,
2024, Request for Reconsideration, demonstrate use of the proposed mark “in the
rendering of its Class 35 services to its franchisees.”14 The May 17, 2024, filing
contained Applicant’s averment that “The specimen(s) submitted consists of
screenshots of the franchise portal login page and screenshot of order [page] from the
Franchise portal.”15 These two screenshots16 appear below:
14 See 11 TTABVUE 23-24.
15 See May 17, 2024, Request for Reconsideration, at TSDR 5. In the request for reconsideration, Applicant declared “The substitute … specimen(s) was/were in use in commerce at least as early as the filing date of the application.” See id. 16 The screenshots appear at id. at 31-32. Duplicates appear at id. at 49-50.
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The second of these two screenshots is illegible except for the words “PURCHASE
ORDER.” There’s something that might be the proposed mark in the upper left of this
screenshot, but we’re not sure because it’s so small and blurry. Trademark Rule
2.56(c) requires that a specimen consisting of a “web page printout” be “clear and
legible.” So the second screenshot does not suffice because it is illegible.
The first screenshot is legible, so it is not disqualified at the threshold. Applicant
explains that this screenshot consists of “the log in page … offered by Applicant to its
franchisees for completing online ordering.”17 Applicant contends that, under our
precedents, it has satisfied the specimen requirement for its Class 35 restaurant
franchising services. We agree.
The services here are “Restaurant franchising, namely, offering business
management assistance in the establishment and/or operation of restaurants;
franchise services, namely, offering business management assistance in the
establishment and operation of retail business establishments featuring Italian ice,
ice cream, and frozen drinks.” It is helpful to understand, both as a business and a
legal matter, what restaurant franchising is. The “cornerstone of a franchise system
must be the trademark or trade name of a product. It is this uniformity of product
and control of its quality and distribution which causes the public to turn to franchise
stores for the product.” Krebs Chrysler-Plymouth, Inc. v. Valley Motors, Inc. 141 F.3d
490, 497 (3d Cir. 1998) (citation omitted); see also Howell v. Chick-Fil-A, Inc., Civ. No.
92-30188-RV, 1993 WL 603296, at *3 (N.D. Fla. Oct. 29, 1993) (“Chick-Fil-A tightly
17 See 11 TTABVUE 23.
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controls the product which is sold in the restaurants operated by their independent
contractors. Local restaurants are required to purchase their food and seasonings
only from sources approved by Chick-Fil-A. … Of course, the central concept of fast
food merchandising is a unique, standard product which will be instantly recognized
by the public. Consequently, fast food franchisors strictly regulate the selection and
preparation of the food to be sold by their franchisees. Such control is essential ….”)
(citation omitted).18 It follows then that “Restaurant franchising, namely, offering
business management assistance in the establishment and/or operation of
restaurants” would involve ensuring that the foods sold meet the franchise quality
standards. Providing franchisees an online means to order approved food and other
approved supplies is thus a key component of Applicant’s services for its contractual
partners, its franchisees.
With these legal parameters and understanding of the broader restaurant
franchising services in mind, it becomes clear under our caselaw that the combination
of Applicant’s log-in portal screenshot and accompanying explanation of how the page
relates to the identified restaurant franchising business management assistance
services together are sufficient to show or demonstrate use of the mark on the
specimen for the identified services.19 For example, in Pitney Bowes, the services were
18 Indeed, to constitute a valid trademark license of any sort, the licensor must exercise quality control. See Visa, U.S.A., Inc. v. Birmingham Trust Nat. Bank, 696 F.2d 1371, 1377 (Fed. Cir. 1982) (“The principal requirement … is that the licensing agreement provides for adequate control by the licensor over the quality of goods or services produced under the mark by a licensee....”) (cleaned up; citation omitted).
19 Here, Applicant accompanied its second substitute specimens with a declaration that averred that “[t]he specimen(s) submitted consists of screenshots of the franchise portal login
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“mailing services” and the mailing kiosk depicted in the specimen (a screenshot)
referred to mailing services provided by others. See 2018 WL 360241, at *1-2. Looking
at the specimen by itself, we acknowledged that the examining attorney had
“reasonably found the specimen unclear as to whether Applicant, rather than a third
party, provides the services ….” Id. at 4. But Pitney Bowes then submitted a
declaration explaining:
These kiosks are furnished by Applicant and are placed in
different locations for use by consumers. Consumers use the kiosk
to place postage on a letter or package, and then place that [letter
or package] in the receptacle that is part of the kiosk system for
Applicant to pick up the letter or package and place it in the mail
stream for delivery.
Id. at *1. Looking at the specimen together with the explanation, we held that Pitney
Bowes’ “explanation of the specimen and how [it] provides the outsourced mailing
services referenced on the specimen resolved the ambiguity, and the refusal should
not have been maintained.” Id. at *4. We thus found that “the original specimen
demonstrates use of the mark in a manner that creates in the minds of potential
consumers a direct association between the mark and at least some of the services in
the class, and the explanation corroborates this in a manner that removes any doubt.”
Id.
To the same effect is our decision in In re Metriplex, Inc., No. 73836597, 1992 WL
169149 (TTAB 1992), which Applicant cites.20 In Metriplex, the specimen showed only
page and screenshot of order [page] from the Franchise portal.” See May 17, 2024, Request for Reconsideration, at TSDR 5.
20 See 11 TTABVUE 23.
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the mark itself as it appears on a computer screen with no other reference to the
services. But the services were provided via a computer and, “[a]s applicant explained
in its declaration, the specimens show the mark as it appears on a computer terminal
in the course of applicant’s rendering of the service.” Id. at *2. We thus held that
“[t]here is no question that purchasers and users of the service would recognize [the
mark], as it appears on the computer screen specimens, as a mark identifying the
[identified services]. Thus, the printouts constitute specimens of the mark as used in
the sale of the services.” Id.; see also In re JobDiva, Inc., 843 F.3d 936, 940, 942 (Fed.
Cir. 2016) (Board erroneously failed to consider JobDiva’s CEO’s testimony that
JobDiva curated and aggregated resumés on job boards for subscribers to access via
Job Diva’s personnel placement software).
Citing, inter alia, In re Universal Oil Prods. Co., 476 F.2d 653, 655 (CCPA 1973),
the Examining Attorney argues that “[a] specimen must show the mark used in a way
that would create in the minds of potential consumers a sufficient nexus or direct
association between the mark and the services being offered.” 13 TTABVUE 19. That
is correct as a general statement of the law. See, e.g., JobDiva, 843 F.3d at 941-42
(“The question is whether a user would associate the mark with ‘personnel placement
and recruitment’ services performed by JobDiva, even if JobDiva’s software performs
each of the steps of the service. In other words, the question is whether the evidence
of JobDiva’s use of its marks sufficiently creates in the minds of purchasers an
association between the marks and JobDiva’s personnel placement and recruitment
services.”) (cleaned up; citation omitted).
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But the Examining Attorney does not explain how this general legal principle
supports the specimen refusal here. If, by this statement, the Examining Attorney
means that the specimen itself—apart from any declaration or other document(s)
submitted along with it21—must by itself refer to “franchise services, namely,
business management assistance in the establishment and operation of retail
business establishments featuring Italian ice, ice cream, and frozen drinks,” we
disagree that Universal Oil supports this argument. Universal Oil held that there
must be “some direct association between the offer of services and the mark sought
to be registered therefor” (emphasis in original). Id. at 655. The Court presumably
emphasized the term “services” in that sentence because the problem in that case was
that the brochure that the applicant offered as a specimen showed the marks PACOL
and PENEX in connection with two different chemical processes offered by the
applicant but, as the Court pointed out, “[n]owhere in this brochure, however, is there
a reference to PACOL or PENEX services.” Id. at 654. Because the specimen showed
the marks being used in connection only with something other than the identified
services, the Court affirmed the Board’s determination that the specimen was
insufficient. That is not the case here, as the combination of the log-in page for
Applicant’s order entry system, together with Applicant’s explanatory declaration,
shows use of the mark in connection with the rendering of Applicant’s Class 35
“franchise services, namely, offering business management assistance in the
establishment and operation of retail business establishments featuring Italian ice,
21 A declaration or sworn statement is preferable, but it is not required in all circumstances.
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ice cream, and frozen drinks.” See, e.g., Pitney Bowes, 2018 WL 360241, at *4;
Metriplex, 1992 WL 169149, at *1.22
Here, the combination of the “Ralph’s Order Entry System” log-in page, together
with Applicant’s declaration explaining the page, suffices to show the proposed mark
as used in rendering a part of the identified services in Class 35. We therefore reverse
the Class 35 specimen refusal.23
II. Is the proposed mark inherently distinctive for the goods and
services in each identified International Class?
We now turn to whether the proposed mark—a repeating pattern of alternating
vertical blue and white stripes—is inherently distinctive or, instead, constitutes
ornamental matter that is not inherently distinctive as to the identified goods and
services.
A. Two preliminary matters
Before we assess the evidence bearing on whether the proposed mark is inherently
distinctive, there are two preliminary matters to address.
22 We also think the Examining Attorney’s statement that the specimen must “create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered” (emphasis added) could reflect an incomplete statement about specimen acceptability for services. Specimens for services may reflect, as this screenshot does, the mark as used in rendering the service to those who receive the services. See Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2). The Examining Attorney’s statement, however, could be read as limiting specimens to those used in selling or advertising the services.
23 Because we reverse the Class 35 specimen refusal based on the second substitute specimens that Applicant submitted with its May 17, 2024, Request for Reconsideration, it is unnecessary to consider whether Applicant’s original or first substitute specimens show service mark usage for Class 35.
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1. The description of the proposed mark
We first need to address a dispute about the description of the mark.
“A description of the mark must be included if the mark is not in standard
characters.” Trademark Rule 2.37, 37 C.F.R. § 2.37; see also Trademark Rule
2.52(b)(5), 37 C.F.R. § 2.52(b)(5). Trademark Rule 2.52(b)(1) provides that for special
form drawings, “[t]he applicant must include a clear drawing of the mark when the
application is filed.” In addition, for an application to register a mark that “includes
color,” “the drawing must show the mark in color, and the applicant must name the
color(s) [and] describe where the color(s) appear on the mark … .” 37 C.F.R.
§ 2.52(b)(1). Section 808.02 of the TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP) (May 2026) provides the following guidance: “the description should state
clearly and accurately what the mark comprises, and should not create a misleading
impression… .” Section 1202.19(b), which applies to marks comprising repeating
patterns, adds that the description must be “accurate” and “identify the various
elements of the pattern.” “It is sufficient for the description to generally characterize
the elements and indicate that they are repeated.” Id. As with all types of marks,
“[f]or repeating patterns featuring color, the application must include an appropriate
color claim and the description must indicate where the claimed colors appear.” Id.
And for repeating patterns used in connection with goods, “the description must
specify how the pattern will appear on the relevant items;” and whether the pattern
appears over the entire surface of the item or only a portion of the item itself or
packaging. Id.
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The description of a mark is especially important for marks comprising trade
dress. In In re Data Packaging Corp., 453 F.2d 1300 (CCPA 1972), the Court
discussed the U.S. Supreme Court’s decision in Leschen & Sons Rope Co. v. Broderick
& Bascom Rope Co., 201 U.S. 166 (1906), and explained why this is so. The Data
Packaging decision described how, in Leschen, “the description of appellant’s
trademark contained in its registration” stated ‘The trademark consists of a red or
other distinctly colored streak applied to or woven in a wire rope.’” Data
Packaging, 453 F.2d at 1303 (emphasis added). But the drawing of the mark in the
application showed the “streak” to be red and woven “within the strands.” See id. The
Data Packaging Court noted that this discrepancy between the drawing and the
written description of the mark led the U.S. Supreme Court to hold the registration
invalid because a competitor “might, by adopting a white streak running along the
length of the rope across the strands, find himself an infringer, when his real object
may have been to obtain a mark which would distinguish his manufacture from that
of the plaintiff’s.” See id. (emphasis added).
As we mentioned at the outset, the most recent description that the Examining
Attorney found acceptable was:
The mark consists of a repeating pattern of alternating blue and
white vertical stripes. The repeating pattern appears on a portion
of the surface of the goods, on a portion of the packaging for the
goods, on a portion of the building facades in which the services
are offered, and on displays, marketing and advertising materials
associated with the services.24
24 See May 17, 2024, Request for Reconsideration at TSDR 2 (asking to amend description); see also August 19, 2024, Denial of Reconsideration, at TSDR 5 (accepting this description).
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Following the institution of this appeal, Applicant filed a request to remand the
application to the Examining Attorney for consideration of a proposed amendment to
the description to read (additional language shown in bold):
The mark consists of a repeating pattern of alternating blue and
white vertical stripes, which are of equal width and
proportion. The repeating pattern appears on a portion of the
surface of the goods, on a portion of the packaging for the goods,
on a portion of the building facades in which the services are
offered, and on displays, marketing and advertising materials
associated with the services.25
The Examining Attorney, however, denied Applicant’s request to amend the
description, stating:
The additional language “which are of equal width and
proportion” is unacceptable as being inaccurate because the
alternating blue and white vertical stripes are NOT of “equal
width and proportion”. Here, the blue vertical stripes are thinner
than the white vertical stripes. As such, the proposed mark
description amendment is unacceptable.26
Applicant insists otherwise, hypothesizing that the Examining Attorney has
fallen prey to an optical illusion whereby the human eye perceives the white lines as
larger than the alternating and contrasting darker colored blue lines.27 Neither the
Examining Attorney’s nor Applicant’s position is accompanied by evidence (except, of
course, the drawing itself). And both seem like reasonable positions. As such, we
We read that wording “appears on a portion of the surface of the goods” to include the cups and containers in which many of the goods—such as those identified in Classes 29, 30, and 32—are sold (for example, in restaurants and at ice cream/ices stands). Cf. TMEP Section 904.03(k) (discussing specimens for marks that are impracticable to place on goods). 25 See 7 TTABVUE 2 (Oct. 11, 2024, Request for Remand).
26 See 9 TTABVUE 2 (Dec. 5, 2024, Subsequent Final Office Action).
27 See 14 TTABVUE 21.
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believe that this situation appropriately falls within the guidelines set forth in the
Trademark Manual of Examining Procedure that “if an element in a mark could
reasonably be characterized in more than one way, the examining attorney should
accept the applicant’s selection of one characterization over the other in the
description.” TMEP § 808.02. Accordingly, we accept the proposed amendment to the
description of the mark that Applicant submitted on remand as accurate and as the
operative description for purposes of this appeal.28
2. Applicant’s belated request for a conditional remand
In its reply brief, Applicant asserts that the URLs identifying a handful of Internet
webpages the Examining Attorney placed in the record over the five-year period of
Applicant’s prosecution of this application are currently inoperative.29 Applicant
claims that this makes the screenshots depicted by these webpages “irrelevant.”30
Applicant attaches what it says are screenshots of the pages reflected by these nownonworking links to its reply brief and requests that, if its appeal is “refused,” the
Board should remand the case to consider “this new evidence.”31 The request is
denied.
There are many problems with this argument and conditional remand request.
First, the record should be complete before appeal, Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d), so Applicant should not have attached “new evidence” to a brief to
28 The application continues to claim the colors blue and white as a feature of the mark. 29 See 14 TTABVUE 17-18.
30 Id.
31 Id. at 18.
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the Board. Second, once a final decision issues on an appeal, prosecution will not be
re-opened except to enter a disclaimer. Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).
Third, we generally do not consider remand requests embedded in briefs; rather, they
should be made by separate request, preferably before any briefs are filed. See, e.g.,
In re Ox Paperboard, LLC, No. 87847482, 2020 WL 4530517, at *2 (TTAB 2020).
Fourth, requests for remand should be accompanied by a showing of good cause, see
generally In re NextGen Mgmt., LLC, No. 88098031, 2023 WL 111145, at *2 (TTAB
2020), and Applicant has not even attempted to show good cause for a remand at this
final stage of the appeal. See, e.g., Ox Paperboard, 2020 WL 4530517, at *3; In re
Thomas White Int’l, Ltd., No. 77080379, 2013 WL 2951787, at *6 (TTAB 2013); In re
Petroglyph Games, Inc., No. 78806413, 2009 WL 1759327, at *2 (TTAB 2009).
Fifth, we question the premise of this argument. That a URL for a specific
webpage in the record no longer works does not mean that the product or service
depicted on the page is not currently depicted on another webpage or that it never
existed or no longer is available in the market. Companies frequently change the
graphics, content, and specific pagination of their websites. Applicant provides no
evidence that the products and services depicted were never, or are no longer,
available. Cf. In re Gen. Mills IP Holdings II, LLC, No. 86757390, 2017 WL 4082590,
at *6 (TTAB 2017) (“Applicant has not adduced evidence to support its contention
that some of the products shown are no longer offered; the burden of rebutting the
Examining Attorney’s evidence rests on Applicant.”). And even if the product or
service depicted in a webpage appended to an Office action in an appeal record were
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no longer available, that does not make it “irrelevant” in a case of this type. As the
Federal Circuit said when assessing inherent distinctiveness in Chippendales, “the
Board appropriately considered evidence of the current situation as well as evidence
of earlier uses, since earlier uses can shed light on the current situation.” 622 F.3d at
1355. We further note that there is no arbitrary time cut-off for evidence of thirdparty use in assessing acquired distinctiveness. While evidence of use older than five
years old may be less probative than more recent evidence, see, e.g., Converse, Inc. v.
ITC, 909 F.3d 1110, 1121 (Fed. Cir. 2018), none of the webpages about which
Applicant complains were placed in the record more than five years ago.
Still, we give no further consideration to some of these allegedly nonworking
webpages as well as other webpages for other reasons. Several pages are stock photo
licensing images or awning company websites, and appear to be mock-ups rather than
depictions of actual retail businesses in the fields with which we are concerned. We
also give no further consideration to photos of several foreign ice cream shops that
use stripes because there is no corresponding evidence indicating the extent, if any,
to which U.S. consumers have been exposed to these foreign uses. See In re Florists’
Transworld Delivery, Inc., No. 77590475, 2013 WL 2951796, at *1 (TTAB 2013); see
generally In re Bayer AG, 488 F.3d 960, 969 (Fed. Cir. 2007). As to the remaining
handful of objected-to webpages, they represent only a minute fraction of the uses of
stripes by others for the relevant goods and services in the record, so even if we were
to exclude them, our findings below would not change in any material sense.
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B. Legal standards: Inherent distinctiveness and trade dress
As defined in the Trademark Act, a “trademark” or “service mark” includes “any
word, name, symbol, or device … used by a person … to identify and distinguish” their
goods or services from those of others and “to indicate the source” of the goods or
services. 15 U.S.C. § 1127. To perform the function of a mark to “identify and
distinguish” among sources of a good or service and thus be protectable, a proposed
mark must be “distinctive.” See, e.g., B & B Hardware, Inc. v. Hargis Indus., Inc., 575
U.S. 138, 142 (2015) (“The principle underlying trademark protection is that
distinctive marks—words, names, symbols, and the like—can help distinguish a
particular artisan’s goods from those of others.”) (citation omitted). “The general rule
regarding distinctiveness has long been clear: An identifying mark is distinctive and
capable of being protected if it either (1) is inherently distinctive or (2) has acquired
distinctiveness ….” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992)
(citations omitted); see also Del. & Hudson Canal Co. v. Clark, 80 U.S. 311, 323 (1871)
(“The trade-mark must therefore be distinctive in its original signification, pointing
to the origin of the article, or it must have become such by association.”).
The standards for determining a proposed mark’s inherent distinctiveness depend
on what kind of mark is at issue. Here, we are concerned with what the current
description characterizes as “a repeating pattern of alternating blue and white
vertical stripes” of equal width that “appears on a portion of the surface of the goods,
on a portion of the packaging for the goods, on a portion of the building facades in
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which the services are offered, and on displays, marketing and advertising materials
associated with the services.” Thus, we are not concerned with a word mark.32
Rather, we are concerned here with trade dress. Product packaging trade dress
may qualify as inherently distinctive, depending on the evidence.33 See, e.g., Two
Pesos, 505 U.S. at 773-74 (restaurant décor); In re Chippendales USA, Inc., 622 F.3d
1346, 1351 (Fed. Cir. 2010) (design of a costume worn by a service provider, i.e., “trade
dress” constituting the “packaging” of the service). Whether such trade dress is
inherently distinctive requires an assessment of:
[1] whether it was a ‘common’ basic shape or design,
[2] whether it was [not] unique or unusual in the particular field,
[3] whether it was a mere refinement of a commonly-adopted and
well-known form of ornamentation for a particular class of goods
[or services] viewed by the public as a dress or ornamentation for
the goods [or services], or
[4] whether it was capable of creating a commercial impression
distinct from the accompanying words.
Chippendales, 622 F.3d at 1351 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd.,
568 F.2d 1342, 1344 (CCPA 1977)). If the answer to any of the first three Seabrook
inquiries as formulated in Chippendales is “yes,” the design is not inherently
32 If we were concerned with a word mark, we would evaluate inherent distinctiveness by determining whether the word(s) is arbitrary, fanciful, or suggestive, as applied to the goods or services (in which case it is inherently distinctive), or instead is merely descriptive or generic as to the goods or services (in which case it is not). See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210-11 (2000); Two Pesos, 505 U.S. at 768. 33 In contrast, product design (i.e., the shape or configuration of a product or one or more components thereof)can constitute a type of trade dress if nonfunctional, see Trademark Act § 2(e)(5); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30 (2001), but can never be considered inherently distinctive. See Wal-Mart, 529 U.S. at 212, 216.
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distinctive. Id.34 In In re Fantasia Distrib., Inc., No. 86185623, 2016 WL 5866950
(TTAB 2016), the Board adapted and applied this test to a design constituting a
repeating ornamental pattern on goods. See id. at *2-3 (“To assess the potential
inherent distinctiveness of a repeating pattern appearing on a product, such as the
mark in this case, we follow Seabrook Foods …, adapting its factors to this context as
appropriate ….”).
Fantasia noted that marks constituting repeating patterns “frequently serve an
ornamental function in various contexts to decorate goods, such that consumers
would not be predisposed to equate the repeating patterns with source.” See id. at *2.
Taking a cue from the decision in In re Soccer Sport Supply Co., 507 F.2d 1400 (CCPA
1975), the Board in Fantasia held that it did not “absolutely foreclose” the possibility
that some proposed marks constituting repeating patterns could be inherently
distinctive and “function as a mark.” 2016 WL 5866950, at *2. As Soccer Sport Supply
put it:
An ornamental design can be inherently distinctive if it is
arbitrary and distinctive and if its principal function is to identify
and distinguish the source of the goods to which it is applied,
ornamentation being merely incidental. However, a design which
is a mere refinement of a commonly-adopted and well-known form
of ornamentation for a class of goods would presumably be viewed
by the public as a dress or ornamentation for the goods. Especially
would this be so when such design is applied repetitively to the
entire surface of the goods.
34 Because no words accompany the stripes trade dress in this case, the fourth consideration is not implicated.
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507 F.2d at 1402-03 (citations omitted). In light of the possibility that some repeating
ornamental patterns could be inherently distinctive, the Board in Fantasia turned to
the test adopted in Seabrook Foods (and later applied to services in Chippendales),
adapting it to apply to proposed marks constituting repeating patterns and
considering:
• the nature of Applicant’s goods and whether there is an industry practice
of ornamenting such goods;
• the nature of the pattern, including whether any element of the pattern
might be perceived as source indicating if it were standing alone;
• how common the pattern is, whether it is composed of common or unusual
repeating shapes, whether such shapes repeat in a common or unusual
manner, and whether the overall pattern is similar to, or a mere refinement
or variation of, a common and well-known form of ornamentation;
• the manner in which the repeating pattern appears on the product,
including the size and location of the pattern on the product and how much
of the product is covered by the pattern; and
• whether the pattern creates a distinct commercial impression apart from
any accompanying wording and design elements.35
Id. at *3 (citations omitted).36 The Board noted that, as with the originally-formulated
“Seabrook” test, “[p]articular factors may be dispositive as to the lack of inherent
distinctiveness, without the need for a showing under each factor.” Id. (citing
Chippendales, 622 F.3d at 1351).
Notably, although Applicant contests the Examining Attorney’s finding that the
mark is not inherently distinctive, neither Applicant’s appeal brief nor its reply even
35 This inquiry is not implicated here because no words or other design elements appear in the drawing of the proposed mark.
36 Though Fantasia concerned goods, its analysis is easily applied to services.
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mention—let alone purport to apply—the inherent distinctiveness tests set forth in
Chippendales or Fantasia. Rather, its arguments as to the finding that the mark is
not inherently distinctive refer to concepts relevant to acquired distinctiveness, such
as Applicant’s alleged “look-for” advertising,37 articles discussing Applicant,38 and
Applicant’s length of use, sales success, and marketing expenditures.39 Nevertheless,
we will assess how the evidence of record stacks up under the applicable legal test for
inherent distinctiveness.
We assess inherent distinctiveness as to each class of goods or services in the
application. That is because distinctiveness of proposed trademarks is examined in
connection with the identified goods or services, not in the abstract. See Bayer AG,
488 F.3d at 963-64; see also 15 U.S.C. § 1052(e)(1) (registration must be refused if the
proposed mark “[c]onsists of a mark which (1) when used on or in connection
with the goods of the applicant is merely descriptive … of them”) (emphasis
added).40
C. Assessment of the evidence
We will now turn to our assessment of the record evidence, proceeding class-byclass.
37 See 11 TTABVUE 11-12.
38 See id. at 12.
39 See id. at 13.
40 The same goes for acquired distinctiveness. See 15 U.S.C. § 1052(f) (“nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods”) (emphasis added); see also In re Automatic Radio Mfg. Co., 404 F.2d 1391, 1396 (CCPA 1969) (distinctiveness vel non must be determined “with respect to the involved goods … whether the issue be considered to be descriptiveness or ‘secondary’ meaning”).
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1. Shakes; frozen drinks, namely, milk shakes (Class 29)
We first assess the evidence relating to Applicant’s identified goods in Class 26:
shakes and milk shakes. We note that none of Applicant’s specimens show the
proposed trade dress on a cup or container for such shakes. Rather, Applicant’s use
of the proposed stripes pattern in connection with these goods appears to be as part
of the décor of Applicant’s retail locations.
The Examining Attorney placed in the record examples of several companies that
use repeating stripe patterns in connection with selling shakes and milk shakes.
Many, like Applicant, use blue & white stripes of approximately equal width:
• Bridgehampton Candy Kitchen Ice Cream Parlour & Eatery;41
• Uncle Louie G’s;42
• Taggart’s Ice Cream;43
• Ye Ole Fashioned Ice Cream & Sandwich Café;44
• Yum Yum Shop;45
• The Sundae Drive Ice Cream Shop;46
• Dreamette (wide blue stripes with narrow white stripes);47
• Sweet Experience;48
41 Aug. 16, 2024, Denial of Reconsideration, at TSDR 14-16.
42 Id. at 27-31.
43 Id. at 32-33.
44 Id. at 35-38.
45 Id. at 39-40.
46 Id. at 43-44.
47 Id. at 50-55.
48 Id. at 72-73.
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• Dogg’s Ice Cream (blue and white of varying widths);49
• Ben & Jerry’s (Hyannis);50 and
• Blue Mountain Beach Creamery & Shake Shop.51
Several others who sell shakes and milk shakes use vertical stripes of various other
alternating colors:
• Son’s Ice Cream & Italian Ice (white, medium blue and dark blue stripes);52
• Brooklyn Ice Cream Factory (grey & white on awning; blue & white on ice
cream cone wrapper);53
• Handel’s Ice Cream & Yogurt (blue & white with thin red stripe);54
• Portillo’s (red & white);55 and
• Kulfi’s (brown & white).56
The evidence shows that, like Applicant, many other sellers of shakes and milk
shakes feature alternating blue & white stripes on the external décor of the
establishment where they sell their shakes. In other words, these stripes are a basic
and common type of ornamentation used in connection with sales of these goods. See,
e.g., Chippendales, 622 F.3d at 1351 (inquiries [1] & [2]); Seabrook Foods, 568 F.2d
49 Id. at 81-84.
50 November 17, 2023, Subsequent Final Office Action, at TSDR 61-62.
51 Id. at 65-76.
52 Aug.16, 2024, Denial of Reconsideration, at TSDR at 57-59.
53 Id. at 63-65.
54 Id. at 68-69.
55 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 12-13.
56 May 30, 2023, Subsequent Nonfinal Office Action, at TSDR 82-88.
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at 1344 (same), Fantasia, 2016 WL 5866950, at *3 (first and third bulleted inquiries).
Many other such shake vendors use vertical stripes of other alternating pairs of colors
(or multiple colors). Applicant, like so many others, uses its ordinary and
unremarkable stripes pattern in the customary way. At most, Applicant’s blue &
white stripes constitute a mere refinement or variation of the common practice of
using alternating colored stripes in this field. See, e.g., Chippendales, 622 F.3d at
1351 (inquiry [3]); Seabrook Foods, 568 F.2d at 1344 (same), Fantasia, 2016 WL
5866950, at *3 (third bulleted inquiry). As to these goods, the evidence
overwhelmingly shows that the proposed mark is not inherently distinctive.
2. Frozen confections; Beverages made of coffee; Beverages
with a coffee base; Coffee-based iced beverages; Frozen
drinks, namely, Italian ices, non-alcoholic frappes; Italian
ices (Class 30)
As to frozen confections, Italian ices, and frozen drinks, the Examining Attorney
similarly placed in the record examples from the websites of several companies and
other Internet sources displaying photos of vendors of these goods and their retail
outlets that use repeating stripe patterns in connection with such goods. Many, like
Applicant, use blue & white stripes of approximately equal width and proportion:
• Bridgehampton Candy Kitchen Ice Cream Parlour & Eatery;57
• Uncle Louie G’s;58
• Taggart’s Ice Cream;59
57 Aug. 16, 2024, Denial of Reconsideration, at TSDR 14-16.
58 Id. at 27-31; Aug. 29, 2023, Response to Office Action, at TSDR 120. 59 Aug. 16, 2024, Denial of Reconsideration, at TSDR 32-33.
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• Ye Ole Fashioned Ice Cream & Sandwich Café;60
• Yum Yum Shop;61
• The Sundae Drive Ice Cream Shop;62
• Dreamette;63
• Sweet Experience;64
• Dogg’s Ice Cream;65
• Beachy Cream;66
• Ben & Jerry’s (Hyannis);67
• Blue Mountain Beach Creamery & Shake Shop;68
• Nada Moo (nearly horizontal);69 and
• Scoops Ahoy Ice Cream Parlor (horizontal).70
Several others use stripe patterns of various other alternating colors, many of equal
width and proportion:
• Son’s Ice Cream & Italian Ice (white, medium blue and dark blue stripes); 71
60 Id. at 35-38.
61 Id. at 39-40.
62 Id. at 43-44.
63 Id. at 50-55.
64 Id. at 72-73.
65 Id. at 81-84.
66 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 55-60.
67 Id. at 61-62.
68 Id. at 65-76.
69 Id. at 157-72.
70 Id. at 187-99.
71 Aug. 16, 2024, Denial of Reconsideration, at TSDR 57-59.
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• Brooklyn Ice Cream Factory (grey & white on awning; blue & white on ice
cream cone wrapper);72
• Handel’s Ice Cream & Yogurt (blue & white with thin red stripe);73
• Portillo’s (red & white);74
• Newport Creamery (green & white);75
• Penguin Ice Cream (red & white);76
• Purity Ice Cream Co. (red & white);77
• Dreyer’s (brown, tan & white);78
• Joe’s Italian Ice (red, white & green);79
• Junior’s (orange & white) (slightly off-vertical);80
• Richie’s (pink & white);81
• Jeni’s (pink & white, off-vertical) (for Chocolate Peppermint flavor);82
• Klein’s (green and red);83
72 Id. at 63-65.
73 Id. at 68-69.
74 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 12-13.
75 Id. at 15-16.
76 Id. at 18.
77 Id. at 30-39.
78 Id. at 79-85.
79 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 127-37.
80 Id. at 139-51.
81 Id. at 173-75.
82 Id. at 241.
83 Id. at 249-51.
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• DiCosmo’s (red, white & green);84
• Kulfi’s (brown & white);85 and
• Rita’s (red & white).86
As with shakes, this evidence shows that blue & white stripes, and alternating
color stripes generally, are a basic and common type of ornamentation used by many
in connection with the sales of frozen confections, frozen drinks, and Italian ices. See,
e.g., Chippendales, 622 F.3d at 1351 (inquiries [1] & [2]); Seabrook Foods, 568 F.2d
at 1344 (same), Fantasia, 2016 WL 5866950, at *3 (first and third bulleted inquiries).
Many other vendors of these products use vertical stripes of other alternating pairs
of colors (or multiple colors). Applicant uses its ordinary and unremarkable stripes
pattern in this customary way. At most, Applicant’s blue & white stripes are simply
a refinement or variation of the common practice of using alternating colored stripes
in this field. See, e.g., Chippendales, 622 F.3d at 1351 (inquiry [3]); Seabrook Foods,
568 F.2d at 1344 (same), Fantasia, 2016 WL 5866950, at *3 (third bulleted inquiry).
As to frozen confections, frozen drinks, and Italian ices, the evidence overwhelmingly
shows that the proposed mark is not inherently distinctive.
3. Fruit drinks (Class 34)
We turn next to non-alcoholic fruit drinks, including smoothies and non-alcoholic
lemonade. The record reflects five other companies using blue & white or other
alternating-color stripes in connection with sales of fruit drinks:
84 Id. at 253.
85 May 30, 2023, Nonfinal Office Action, at TSDR 82-88.
86 Aug. 29, 2023, Response to Office Action, at TSDR 119.
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• LemonLemon (diagonal stripes of orange & white, violet & white, and yellow
& white);87
• Portillo’s (smoothies) (red & white);88
• Ben & Jerry’s (Hyannis) (smoothies) (blue & white);89
• Blue Mountain Beach Creamery & Shake Shop (“Bill’s lemonade”) (two
shades of blue, with white);90 and
• Fauxmosa (diagonal stripes of white and yellow, white & gold, white & red,
depending on flavor).91
As to fruit drinks, the evidence is not nearly as voluminous as with shakes, frozen
confections, frozen drinks, and Italian ices. One vendor uses blue & white stripes,
another uses a variation that alternates stripes of two shades of blue and white
stripes. Three others alternate white stripes with another color besides blue. In
assessing this quantum of evidence, we note that, in Chippendales, the Federal
Circuit affirmed a finding that a cuffs & collars uniform for performer of adult live
entertainment services was not inherently distinctive based on evidence that one
other company in this industry (Playboy) used cuffs & collars as a part of their
different costume. The Court rested its decision on the third Seabrook inquiry
(“whether [it] is a mere refinement of a commonly-adopted and well-known form of
ornamentation for a particular class of goods viewed by the public as a dress or
ornamentation for the goods or services”). See id. at 1356. Specifically, the Court held
87 March 2, 2021, Nonfinal Office Action, at TSDR 66-69.
88 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 12-13.
89 Id. at 61-62.
90 Id. at 65-76.
91 Id. at TSDR 87-97.
- 32 -Serial No. 90302728
that the Seabrook test would preclude a finding of inherent distinctiveness “if the
Cuffs & Collar mark is a mere variant or refinement of a particular costume.” 622
F.3d at 1356. The Court continued:
The Board alternatively found the Cuffs & Collar mark not
inherently distinctive because of the existence of the pervasive
Playboy mark, which includes the cuffs and collar together with
bunny ears. … The use of the Playboy mark constitutes
substantial evidence supporting the Board’s determination that
Chippendales’ Cuffs & Collar mark is not inherently distinctive.
The Playboy bunny suit, including cuffs and a collar, was widely
used for almost twenty years before Chippendales’ first use of its
Cuffs & Collar trade dress. The Cuffs & Collar mark is very
similar to the Playboy bunny costume, although the Cuffs &
Collar mark includes no bunny ears and includes a bare-chested
man instead of a woman in a corset.
Id. at 1356-57.
Here, we have one fruit drink vendor (a Ben & Jerry’s location) using blue & white
vertical stripes, another using two shades of blue stripes with white stripes, and a
few others using different-colored stripes. While there is no evidence of how long or
extensively any of these others have used their striped ornamentation, there are more
users than in Chippendales. Given that stripes generally are a rudimentary form of
ornamentation and Applicant uses them in an unremarkable way (Seabrook inquiry
[1] and part of Fantasia inquiry [3]), this use of stripes by a few others on the
identified goods persuades us that the proposed mark is not inherently distinctive. In
other words, in the context of fruit drinks, contrasting blue & white stripes, to use
the words of the Supreme Court, “does not almost automatically tell a customer that
it refers to a brand [or] … immediately signal a brand or a product source,” Wal-Mart
- 33 -Serial No. 90302728
Stores, 529 U.S. at 212 (cleaned up) (quoting Qualitex Co. v. Jacobson Prods. Co., 514
U.S. 159, 162-63 (1995))—the hallmark of an inherently-distinctive symbol or device.
4. Alcoholic beverages, except beer; Hard seltzer (Class 33)
As to alcoholic beverages (except beer) and hard seltzer, the Examining Attorney
placed in the record examples of companies that use repeating stripe patterns in
connection with such goods. Two used blue & white stripes:
• Hartwall Original Long Drink (blue & thin white, red & thin white);92 and
• Saint Spritz Amalfi (approximately equal width).93
Several others used variations of alternating-color vertical stripe patterns:
• Fishers Island Lemonade (white and yellow);94
• Smirnoff Peppermint Twist (diagonal red & white/red/grey);95
• Nylo (white with either blue, yellow, tan, or peach, depending on flavor);96
• Namitas (diagonal stripes of white with either yellow, pink, green, or light
orange, depending on flavor);97
• Seagram’s Italian Ice beverage (red & white; red, white & blue);98 and
• Highball Hard Seltzer (different color horizontal stripes varying with
flavor).99
92 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 115-26.
93 Id. at 177-85.
94 Id. at 99-113.
95 Id. at 201-09.
96 Id. at 223-31.
97 Id. at 232-37.
98 May 30, 2023, Nonfinal Office Action, at TSDR 78-79.
99 Aug. 3, 2022, Final Office Action, at TSDR 33-35.
- 34 -Serial No. 90302728
The evidence here is not as overwhelming as to shakes/milk shakes and frozen
confections, but a little better in terms of quantity than as to non-alcoholic fruit
drinks. Here, there are two vendors who have used blue & white vertical stripes, six
other using variations (diagonal, other color with white). We think this evidence is
enough to find that stripes are a basic and common type of ornamentation used in
connection with the sales of alcoholic beverages (except beer), including hard seltzer.
See, e.g., Chippendales, 622 F.3d at 1351 (inquiries [1] & [2]); Seabrook, 568 F.2d at
1344 (same), Fantasia, 2016 WL 5866950, at *3 (first and third bulleted inquiries).
Many other vendors of these products use vertical (or diagonal) stripes of other
alternating pairs of colors (or multiple colors). Thus, Applicant’s blue & white stripes
are simply an unremarkable refinement or variation of the common practice of using
alternating-color stripes in this field. See, e.g., Chippendales, 622 F.3d at 1351
(inquiry [3]); Seabrook Foods, 568 F.2d at 1344 (same), Fantasia, 2016 WL 5866950,
at *3 (third bulleted inquiry). Given how, in addition, stripes in general are a
rudimentary form of ornamentation, we are persuaded that the proposed mark is not
inherently distinctive as to the Class 33 goods.
5. Restaurant services; restaurant services featuring Italian
ice, ice cream, and frozen drinks; serving food and drinks
(Class 43)
The record contains plentiful evidence of restaurants, including restaurants
featuring Italian ice and ice-cream products, using blue and white stripes as trade
dress:
- 35 -Serial No. 90302728
• Café Lucille;100
• Bridgehampton Candy Kitchen Ice Cream Parlour & Eatery;101
• Taggart’s Ice Cream;102
• Ye Ole Fashioned Ice Cream & Sandwich Café;103
• Yum Yum Shop;104
• The Sundae Drive Ice Cream Shop;105
• Dreamette (wide blue stripes with narrow white stripes);106
• Sweet Experience;107
• Dogg’s Ice Cream (blue and white of varying widths);108
• Beachy Cream;109
• Ben & Jerry’s (Hyannis);110
• Blue Mountain Beach Creamery & Shake Shop;111
• The Maine Diner;112
100 Aug. 16, 2024, Denial of Reconsideration, at TSDR 6-13.
101 Id. at 14-16.
102 Id. at 32-33.
103 Id. at 35-38.
104 Id. at 39-40.
105 Id. at 43-44.
106 Id. at 50-55.
107 Id. at 72-73.
108 Id. at 81-84.
109 Nov. 17, 2023, Subsequent Final Office Action, at TSDR at 55-60.
110 Id. at 61-62.
111 Id. at 65-76.
112 Id. at 153-55.
- 36 -Serial No. 90302728
• Scoops Ahoy Ice Cream Parlor;113
• Café Cancale;114
• Yoshino;115
• Glorified Ham n Eggs;116
• White Castle;117 and
• Inès.118
Several others who offer these services use variations of vertical (or variations
that are not vertical) stripe patterns employing various other alternating colors:
• Son’s Ice Cream & Italian Ice (white, medium blue and dark blue
stripes);119
• Handel’s Ice Cream & Yogurt (blue & white with thin red stripe);120
• Joe’s Italian Ice (red, white & green);121
• Junior’s (orange & white) (slightly off-vertical);122
• DiCosmo’s (red, white & green);123
113 Id. at 187-99.
114 Id. at 256-64.
115 Id. at 267-68.
116 Id. at 269.
117 Id. at 273.
118 Mar. 2, 2021, Nonfinal Office Action, at TSDR 86.
119 Aug. 16, 2024, Denial of Reconsideration, at TSDR 57-59.
120 Id. at 68-69.
121 Nov. 17, 2023, Subsequent Final Office Action, at TSDR 127-37.
122 Id. at 139-51.
123 Id. at 253.
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• Friendly’s (Pottstown, PA) (yellow & red);124
• Houlihan’s (black, red & yellow);125
• Chipotle (dark grey & white);126
• Coldstone (black & white);127
• Johnny D’s (blue & narrow yellow);128
• Kulfi’s (brown & white);129
• Nifty Fifty’s (Ridley Township location, black & white);130
• The Berkshire Café (green, white & red);131
• Café Duro (blue, white & brown);132
• Currywurst of Los Angeles (red & black);133 and
• T.G.I. Friday’s (Union Square, NYC location) (red & white).134
As with shakes/milk shakes and frozen confections, this evidence overwhelmingly
shows that blue & white stripes, and alternating color stripes generally, are a basic
and common type of ornamentation used in connection with restaurants generally
124 Id. at 254-55.
125 Id. at 270.
126 Id. at 271.
127 Id. at 272.
128 May 30, 2023, Nonfinal Office Action, at TSDR 47-48.
129 Id. at 82-88.
130 Aug. 3, 2022, Final Office Action, at TSDR 8-14.
131 Id. at 53-57.
132 Id. at 66-67.
133 Mar. 2, 2021, Nonfinal Office Action, at TSDR 80.
134 Id. at 84.
- 38 -Serial No. 90302728
and restaurants serving Italian ices and ice cream in particular. See, e.g.,
Chippendales, 622 F.3d at 1351 (inquiries [1] & [2]); Seabrook Foods, 568 F.2d at 1344
(same), Fantasia, 2016 WL 5866950, at *3 (first and third bulleted inquiries). Many
other vendors of these products use vertical stripes of other alternating pairs of colors
(or multiple colors). Thus, consumers would view Applicant’s blue & white stripes as
simply an unremarkable refinement or variation of the common practice of using
alternating colored stripes in this field. See, e.g., Chippendales, 622 F.3d at 1351
(inquiry [3]); Seabrook Foods, 568 F.2d at 1344 (same), Fantasia, 2016 WL 5866950,
at *3 (third bulleted inquiry). As to Applicant’s restaurant services, the evidence
overwhelmingly shows that the proposed mark is not inherently distinctive.
6. Restaurant franchising, namely, offering business
management assistance in the establishment and/or
operation of restaurants; franchise services, namely,
offering business management assistance in the
establishment and operation of retail business
establishments featuring Italian ice, ice cream, and frozen
drinks (Class 35)
As Applicant’s description of services make clear, its franchising services are in
the field of restaurants and “retail establishments featuring Italian ice, ice cream,
and frozen drinks.” The record reflects that another company, Uncle Louie G’s, uses
vertical blue & white stripes to promote its franchising services in the field of Italian
ices and other frozen treats.135 That a competing business uses the same stripes in
much the same unremarkable way is relevant evidence that the proposed mark lacks
135See May 30, 2023, Nonfinal Office Action, at TSDR 35-43; Aug. 16, 2024, Denial of Reconsideration, at TSDR 27-31 (webpage using blue & white stripes and displaying a dropdown menu for “Franchise Opportunities” for Italian Ice and Ice Cream restaurant; “Learn about our franchise opportunities ….”).
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inherent distinctiveness. See Chippendales, 622 F.3d at 1356-57 (use of a similar
uniform by one other competitor showed that the alleged trade dress was not
inherently distinctive).
We further note that franchising in the food service field involves standards
relating to a particular “ambiance and décor” as well as the type of food served. See,
e.g., Nark, Inc. v. Noah’s, Inc., No. 91052901, 1981 WL 40475, at *11 (TTAB 2011);
see also Williams v. I.B. Fischer Nev., 794 F. Supp. 1026, 1031 (D. Nev. 1992)
(describing a typical fast-food franchise as an arrangement where, among other
required uniformities, “the decor of each franchise is similar”), aff’d, 999 F.2d 445
(9th Cir. 1993); see generally Two Pesos, 505 U.S. at 764 & n.1 (describing the
restaurant trade dress at issue as including the exterior of the restaurant and its
décor). We therefore find that the overwhelming evidence, documented above, of use
of alternating vertical stripes (particularly blue & white stripes) among restaurants
and establishments selling ice cream and other frozen treats is relevant to
determining whether such stripes would be viewed as nondistinctive trade dress in
connection with franchising in the restaurant field.136 We find that, as with nonfranchised restaurant services, the proposed mark consisting of alternating blue &
136 The Examining Attorney’s brief does not break down the uses class-by-class, as we have done here, but rather breaks them down into two broader groups: the goods and the services. Applicant does not argue that the use of stripes by restaurants—including many serving Italian ices and other frozen confections—somehow should be walled off or otherwise is irrelevant to this determination.
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white vertical stripes used “on a portion of the building facades in which the services
are offered”137 is not inherently distinctive.
D. Summary as to inherent distinctiveness
In summary, the evidence shows, as to each of the classes of goods and services
identified in the application, that consumers would perceive the proposed mark as
mere ornamentation. We therefore affirm the refusal to register on the ground that
the proposed mark is ornamental matter that is not inherently distinctive.
III. Has the proposed mark acquired distinctiveness in connection
with the goods and services in each identified International
Class?
That the evidence shows that a proposed mark is not inherently distinctive as to
the goods or services does not necessarily conclude the matter. It is well settled that
even inherently nondistinctive trade dress can be registrable if an applicant claims
and proves, under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), that the
trade dress has acquired distinctiveness as a source identifier in the relevant field.
See, e.g., Two Pesos, 505 U.S. at 769 (marks that “do not inherently identify a
particular source … may acquire the distinctiveness which will allow them to be
protected under the Act.”). Applicant made a Section 2(f) claim in this case, but the
Examining Attorney rejected it as insufficient. We now turn to Applicant’s claim,
which it made in the alternative, that its proposed mark has acquired distinctiveness.
137 See July 12, 2024, Voluntary Amendment, at TSDR 1.
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A. Legal standard for acquired distinctiveness
Acquired distinctiveness means that the “mark or dress has come through use to
be uniquely associated with a specific source.” Id. at 766 n.4 (cleaned up; citation
omitted); see also Textron, Inc. v. ITC, 753 F.2d 1019, 1023 (Fed. Cir. 1985) (acquired
distinctiveness is “an association in buyers’ minds between the alleged mark and a
single source of the product” or service).
Trademark Rule 2.41(a), 37 C.F.R. § 2.41(a), lists three non-exclusive ways that
an applicant may attempt to prove acquired distinctiveness: (1) ownership of a prior
registration of the same mark for similar goods and services; (2) a verified statement
of substantially exclusive and continuous use of the mark in commerce for the
preceding five years; and/or (3) other types of evidence, including “evidence showing
duration, extent, and nature of the use in commerce and advertising expenditures.”
Relevant to the third category in Rule 2.41(a), in Converse, Inc. v. ITC, 909 F.3d
1110, 1120 (Fed. Cir. 2018), the Federal Circuit undertook to list several types of
evidence its prior decisions had identified as potentially relevant to a determination
of whether a proposed mark has acquired distinctiveness. More recently, in Heritage
Alliance v. American Policy Roundtable, 133 F.4th 1063 (Fed. Cir. 2025), the Federal
Circuit restated these “factors” and elaborated on them as follows:
Direct and circumstantial evidence may be considered, and we
have approved analyzing the issue by considering six factors,
without deeming all factors always relevant or the list exhaustive:
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(1) association of the trade dress with a particular source by
actual purchasers (typically measured by consumer
surveys);138
(2) length, degree, and exclusivity of use;
(3) amount and manner of advertising;
(4) amount of sales and number of customers;
(5) intentional copying; and
(6) unsolicited media coverage of the product [or service]
embodying the mark.
Id. at 1069-70 (Fed. Cir. 2025) (citing Converse, 909 F.3d at 1120 (listing the six
factors)).
Before assessing Applicant’s evidence, however, we first address Applicant’s
arguments about who shoulders the burden when an applicant makes a claim under
Section 2(f) that a mark has acquired distinctiveness. Applicant contends that the
“Examining [Attorney] has failed to meet the requisite burden to show that the Mark
has not acquired distinctiveness.”139 This statement reflects an incorrect view of the
law. “The applicant … bears the burden of proving acquired distinctiveness.” In re
138 Applicant did not offer a survey or any other direct evidence of consumer association of the stripes trade dress with Applicant. Survey evidence is a type of direct evidence of acquired distinctiveness, but “is not required.” Schlafly v. Saint Louis Brewery, LLC, 909 F.3d 420, 424 (Fed. Cir. 2018). (We note that another type of direct evidence is consumer testimony, see, e.g., Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 969 (Fed. Cir. 2015), but Applicant did not offer that type of evidence either.) In distinction from direct evidence, circumstantial evidence includes such things as evidence relating to advertising, sales, intentional copying, and unsolicited press, see, e.g., Tone Bros. v. Sysco Corp., 28 F.3d 1192, 1201 (Fed. Cir. 1994); Union Mfg. Co. v. ITC, 826 F.2d 1071 (table), 1987 WL 37901, at *1 (Fed. Cir. 1987)—all of which are reflected in the other categories of evidence the Federal Circuit listed in Heritage Alliance and in Converse. These are the types of evidence that Applicant offers here.
139 11 TTABVUE 21; see generally id. at 19-22.
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La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015) (citing In re
Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005)); In re Hollywood Brands,
Inc., 214 F.2d 139, 140 (CCPA 1954) (“There is no doubt that Congress intended that
the burden of proof [under Section 2(f)] should rest upon the applicant for registration
….”).
Citing In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir.
1987), Applicant relatedly argues that “[i]t is well-settled that any doubt as to
whether a mark has acquired distinctiveness should be resolved in favor of
Applicant.”140 We disagree. In Merrill Lynch, the Court noted that the Board decision
on appeal “offered no conclusion on the adequacy of [the applicant’s] showing under
section 2(f).” 828 F.2d at 1571. Rather, the appeal concerned only the Board’s decision
that the mark was generic. Id.
As to evidence of acquired distinctiveness, we preliminarily note that “the exact
kind and amount of evidence necessary to establish [acquired distinctiveness]
necessarily depends on the circumstances of the particular case.” In re Hehr Mfg. Co.,
279 F.2d 526, 528 (CCPA 1960)141; see also, e.g., In re Gen. Mills IP Holdings, LLC,
No. 86757390, 2017 WL 4082590, at *2 (TTAB 2017) (“The amount and character of
evidence required to establish acquired distinctiveness depends on the facts of each
case and the nature of the mark sought to be registered.”). “Typically, more evidence
140 See 11 TTABVUE 21.
141 For proposed word marks, a similar principle applies. See, e.g., Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 979 (Fed. Cir. 2018) (“[w]here a mark sits on a sliding scale of descriptiveness impacts the burden a proposed registrant must bear with respect to its claim of acquired distinctiveness.”) (citation omitted).
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is required where a mark is such that purchasers seeing the matter in relation to the
offered goods [or services] would be less likely to believe that it indicates source in
any one party.” Gen. Mills IP Holdings, 2017 WL 4082590, at *2 (citations omitted)
(the applicant bore a “difficult burden” in case involving the color yellow used as trade
dress for cereal boxes); see also In re Lorillard Licensing Co., No. 76680117, 2011 WL
3212246, at *5 (TTAB 2011) (packaging trade dress for cigarettes; “applicant has a
heavy burden in this case to establish that the applied-for matter has acquired
distinctiveness and is perceived as a trademark for its goods”); In re Chevron Intell.
Prop. Grp., LLC, No. 78490836, 2010 WL 5010883, at *4 (TTAB 2010) (exterior trade
dress fixture for vehicle service station services; “Because the subject matter sought
to be registered is a mere refinement of the commonly used pole spanner design in
the automobile service station industry, applicant has a relatively heavy burden for
establishing acquired distinctiveness.”); In re Brouwerij Bosteels, No. 77357895, 2010
WL 3501476, at *10 (TTAB 2010) (glass-and-stand container (i.e., product packaging
trade dress) for goods identified as “beer”; “[G]iven the nature of the alleged mark,
more evidence would be necessary to show that it has become distinctive of applicant’s
goods … .”).
In this case, the evidence we discussed in our analysis of inherent distinctiveness
shows that many others providing the goods and services covered by this application
use stripes that are identical or highly similar to Applicant’s in the same way that
Applicant uses its stripes. Based on what the evidence shows to be the circumstances
in this case—a case involving a commonly-used form of ornamentation—Applicant
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has a relatively difficult task to prove that its proposed mark has acquired
distinctiveness.
In assessing the evidence Applicant puts forward and other evidence in the record
bearing on acquired distinctiveness, we also keep in mind that “[a]n evidentiary
showing … adequate to show that a mark has acquired distinctiveness … includes
evidence of the trademark owner’s method of using the mark, supplemented by
evidence of the effectiveness of such use to cause the purchasing public to identify
the mark with the source of the product” or service. In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 1125 (Fed. Cir. 1985) (emphasis added); see also In re Palacio
Del Rio, Inc., No. 88412764, 2023 WL 3751118, at *13 (TTAB 2023) (“The ultimate
test in determining whether a designation has acquired distinctiveness is Applicant’s
success, rather than its efforts, in educating the public to associate the proposed
mark[s] with a single source.”) (citation omitted); In re Pennzoil Prods. Co., No.
73670049, 1991 WL 326581, at *7 (TTAB 1991) (“applicant’s large advertising
expenditures are merely indicative of its efforts to develop secondary meaning, but
are not determinative of the success of those efforts”) (citation omitted).
B. Applicant’s evidence of acquired distinctiveness
Preliminaries out of the way, we now assess the evidence bearing on acquired
distinctiveness. Applicant did not attempt to show ownership of a prior registration
under Trademark Rule 2.41(a)(1). When Applicant first claimed acquired
distinctiveness in the alternative, it did not supply a verified statement of continuous
and substantially exclusive use under subsection (a)(2). Later in prosecution,
however, Applicant submitted the declaration of its Treasurer, Larry Silvestro,
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attesting that Applicant “has been using” the stripe pattern “in connection with all
the goods and services … for twenty years, since at least as early as 2004,”142 and that
such use has been “extensive” and “continuous.”143 Notably, however, this declaration
does not track the language from Section 2(f) that Applicant’s use has been
“substantially exclusive”—which is not surprising given the pervasiveness of
identical and similar stripe patterns in the fields covered by the application—so it
fails to satisfy Trademark Rule 2.41(a)(2). Indeed, our review of the record reveals
that Applicant never submitted an affidavit or declaration attesting to, “substantially
exclusive” use of its proposed mark. See 15 U.S.C. § 1052(f) (referring to an applicant’s
right to submit “proof of substantially exclusive and continuous use”) (emphasis
added); see also In re Nat’l Distillers & Chem. Corp., 297 F.2d 941, 944-45 (CCPA
1962) (“statements made over the signature of counsel are not evidence of the facts
averred”).144 But we will consider Silvestro’s Declaration for his other statements as
part of our examination of the “other evidence” bearing on acquired distinctiveness
under subsection (a)(3).
It is to subsection (a)(3)’s “other evidence” that we now turn. We will address the
evidence using the category headings identified in Heritage Alliance and Converse,
though not in the order they were listed in those cases.
142 See May 17, 2024, Request for Reconsideration, at TSDR 18.
143 See id. at 19.
144 Even if Applicant had submitted such a declaration, Section 2(f) does not require the USPTO to accept it as definitive proof of acquired distinctiveness. See, e.g., In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336-37 (Fed. Cir. 2015) (“Although Section 2(f) … provides that that the PTO may accept five years of ‘substantially exclusive and continuous’ use as prima facie evidence of acquired distinctiveness, the statute does not require the PTO to do so.”).
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1. Unsolicited media coverage of the products or services
embodying the mark
Applicant first argues that “[t]hird party news articles and publications illustrate
that the Mark has acquired distinctiveness in the marketplace and consumers
directly associate the Mark in connection with Applicant’s Goods and Services.”145 An
examination of the articles to which Applicant refers does not indicate any recognition
of the stripes trade dress as identifying, uniquely or otherwise, Applicant. As far as
we can discern, no article even mentions the stripes trade dress in text. And only a
single 2019 article depicts Applicant’s business with a photo showing only the stripes
trade dress and no other visible source identifiers:
146.
Several other articles display the claimed stripes trade dress only together with
Applicant’s word mark RALPH’S FAMOUS, e.g.:
145 11 TTABVUE 16-18 (citing Aug. 29, 2023 Response to Office Action Exhibit B). 146 See Aug. 29, 2023, Response to Nonfinal Office Action, at TSDR 183.
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147 148
149 150
151 152
147 See id. at 93.
148 See id. at 122.
149 See id. at 148.
150 See id. at 156.
151 See id. at 166.
152 See id. at 175.
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153.
What’s more, some of the articles not only fail to mention the claimed stripes trade
dress, they do not even depict it, e.g.:
154 155
153 See id. at 202.
154 See id. at 97.
155 See id. at 103.
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156 157
158 159
160 161
156 See id. at 111.
157 See id. at 118.
158 See id. at 137.
159 See id. at 142.
160 See id. at 169.
161 See id. at 173.
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162
Articles like these, referring to Applicant only by its word mark and discussing
Applicant’s business in positive terms, plainly benefit Applicant’s business as a
general matter. But in this appeal we are concerned with a different, more specific
question: whether these articles reflect that customers and potential customers view
blue & white stripes as uniquely indicating and distinguishing goods and services
from a single source: Applicant. See Two Pesos, 505 U.S. at 766 n.4 (“uniquely
associated with a specific source”); Coca-Cola Co. v. Koke Co. of Am., 254 U.S. 143,
145-46 (1920) (“a single thing coming from a single source”); Textron, 753 F.2d at 1023
(“a single source of the product”); Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401,
1403 (Fed. Cir. 1984) (“indicating one source of quality control and thus one quality
standard”); House of Worsted-Tex, Inc. v. Superba Cravats, Inc., 284 F.2d 528, 530
(CCPA 1960) (“a single manufacturer or vendor”). As to that specific question, in a
marketplace brimming with others using the same or highly similar stripes trade
dress for the same type of business, we think these articles do little to show us that
162 See id. at 200.
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consumers associate blue & white stripes as uniquely identifying Applicant.
Certainly Applicant has not provided any evidence that these articles have had any
such effect.
2. Amount of sales and number of customers
Applicant also argues that it has made “significant sales” under the mark and that
“[i]n 2022 alone, Applicant sold approximately $8,564,482.35 worth of goods and
services bearing or advertised under the Mark.”163 Applicant also points to redacted
summaries of sales revenues from 2017-2021, which range annually from $6.5M to
$8.1M in revenue.164 The declaration from Applicant’s Treasurer avers that from
2004-2024, Applicant enjoyed “more than $110 Million in sales” revenues and that
since 2004, Applicant has “served more than one million customers.”165
Sales figures alone may not suffice in showing that a particular proposed mark
has acquired distinctiveness where other marks were featured with the mark at issue
or the growth could be attributed to the product’s popularity. E.g., In re Bongrain Int’l
(Am.) Corp., 894 F.2d 1316, 1318 (Fed. Cir. 1990) (“The Board likewise ruled correctly
that appellant’s evidence as to acquired distinctiveness or secondary meaning was
insufficient to permit registration under Section 1052(f). Growth in sales was the
principal factor upon which appellant relied to show distinctiveness. But, as the
Board observed, this may indicate the popularity of the product itself rather than
recognition of the mark ‘BABY BRIE’ as indicative of origin; or it may indicate
163 11 TTABVUE 18. The figures cited in this section were not submitted confidentially. 164 See Aug. 29, 2023, Response to Office Action, at TSDR 205-30.
165 See May 17, 2024, Request for Reconsideration, at TSDR 18-19.
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acceptance of Bongrain’s other mark ‘Alouette’, which was used along with ‘BABY
BRIE’ on the packages.”); Seabrook, 568 F.2d at 1345 (“The only evidence presented
by Seabrook on secondary meaning is the sales volume of its products. Although such
evidence may have relevance in establishing secondary meaning, it is not necessarily
indicative of recognition of the mark by purchasers as an indication of source of the
goods. There is no persuasive evidence that the design portion of Seabrook’s mark
has acquired secondary meaning, such as might be shown by a consumer survey or
by advertising emphasizing the design portion of the mark to potential customers
coupled with a showing that such advertising had consumer impact. All sales were
made under the composite words-plus-design mark.”) (citations omitted; emphasis
added).
One way to help sales figures and customer numbers have more “oomph” in
showing acquired distinctiveness is to provide contextual evidence showing how an
applicant’s numbers stack up compared to those of its competitors. We have
frequently noted that contextual evidence affects the probative value of an applicant’s
sales and advertising figures. See, e.g., In re GJ & AM, LLC, No. 86858003, 2021 WL
2374670, at *21 (TTAB 2021) (listing cases); accord In re JC Hospitality LLC, 802 F.
App’x 579, 585 (Fed. Cir. 2020). Applicant here, however, points to no such contextual
evidence.
The sales figures and customer numbers here are not so large on their face that,
in the absence of contextual information, we would give them much weight in
determining whether consumers have come to recognize the blue & white vertical
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stripe pattern as indicating a unique source of the identified goods and services. And
the fact that, as far as we can tell, the stripes trade dress always appears with
Applicant’s main word mark(s) lessens the probative value of these raw summary
figures even more. Moreover, these numbers lump all of Applicant’s goods and
services together, making it impossible to determine how we should apply them to
each of the goods and services as to which Applicant claims that the mark has
acquired distinctiveness. And, as we mentioned earlier, we are required to assess both
inherent and acquired distinctiveness as to each type of good or service identified. See
15 U.S.C. § 1052(f) (“nothing in this chapter shall prevent the registration of a mark
used by the applicant which has become distinctive of the applicant’s goods”)
(emphasis added); Automatic Radio Mfg., 404 F.2d at 1396 (distinctiveness must be
determined “with respect to the involved goods … whether the issue be considered to
be descriptiveness or ‘secondary’ meaning”).
These generalized and uncontextualized sales figures do little to advance
Applicant’s argument that consumers uniquely associate the stripes with Applicant.
3. Amount and manner of advertising
Applicant argues that it has spent “tens of thousands of dollars on marketing and
advertising under the Mark,” noting that it spent “approximately $14,400.00
advertising Applicant’s Goods and Services bearing the Mark” in 2022.166 Its
Treasurer’s declaration avers that, from 2004 to 2024, Applicant “spent over
approximately $2 million dollars in advertising expenditures educating consumers
166 See 11 TTABVUE 18.
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about the connection of the Ralph’s Goods and Service’s (sic) in connection with the
[stripes trade dress].”167
There are several deficiencies in this evidence. First, just on their faces, these are
not large numbers. Second, the declaration points us to no exemplars of
advertisements purchased with these expenditures, leaving us to guess how these
ads “educat[ed] consumers” about the stripes trade dress. The only attachments to
the declaration that could fall under the rubric of advertising are (1) webpages from
Applicant’s website entitled “Our Story,” providing a timeline of Applicant’s
history;168 and (2) two Instagram posts and one Facebook post169 each depicting a
storefront of one of Applicant’s locations, all of which display Applicant’s word mark
prominently above the entrance and none of which mention the stripes trade dress.170
167 See May 17, 2024, Request for Reconsideration, at TSDR 19.
168 See id. at 21-30.
169 We note that the Silvestro Declaration attested to “more than 40,000 collective followers on various [social media] platforms,” see id. at 19, but Applicant’s brief does not mention this, let alone explain its significance. Nor do we see any context as to whether that’s a lot or a little in the various fields covered by the application (among which Applicant does not differentiate). As an absolute matter, the number seems small on its face for collective followers across multiple social media platforms.
170 See id. at 46-48. Though Applicant’s brief does not point to it, we also note that Applicant’s August 29, 2023, Response to Nonfinal Office Action discussed advertising, see id. at 22, but it attached only a few invoices for advertising charged to franchisees, with no exemplars of what the advertising looked like. See id. at 232-77. We further note that Applicant submitted several screenshots of social media as exhibits to its February 3, 2023, Request for Reconsideration, at TSDR 136-64, and August 29, 2023, Response to Nonfinal Office Action, at TSDR 53-80. But our review of these pages revealed, among hundreds of photos, almost no depictions of the stripe pattern. Instead, the logo version of the RAPLH’S FAMOUS mark featured prominently throughout. In addition, the social media hashtags for these posts all incorporate variations of Applicant’s word marks (e.g., #ralphsices, #ralphsfamous, #ralphsfamousices, #ralphsfamousitalianices, #ralphsicecream). Thus, the social media evidence presented does nothing to advance Applicant’s argument that the proposed mark has acquired distinctiveness. See In re Jasmin Larian, LLC, No. 87522459, 2022 WL 374410,
- 56 -Serial No. 90302728
Thus, for all we can discern from the record, Applicant’s advertising argument suffers
from the same probative-value-sapping problem as its sales argument does: it seems
more likely that consumers seeing these few exemplars of social media posts and the
webpages are more likely to view Applicant’s word mark(s) as identifying source than
the sometimes-appearing-and-sometimes-not stripes pattern. In In re Mogen David
Wine Corp., 372 F.2d 539 (CCPA 1967), the Court observed:
We have examined appellant’s advertising and promotional
material appearing of record. We find therein no promotion
advertisement or display of the container configuration per se as
an indication of the origin of the wines. While a decanter bottle of
wine is featured, there is nothing to indicate that the container
has been promoted separate and apart from the word mark
“MOGEN DAVID.” We are unable to find a single reference to the
container itself. Prominently displayed on the wine-filled
container in every instance is “MOGEN DAVID WINE.” … We
think it reasonable to assume, therefore, as did the board, that
the … association of the decanter with appellant [as reflected in
50 form affidavits] was predicated upon the impression imparted
by the mark MOGEN DAVID and other descriptive material
appearing thereon rather than by any distinctive characteristic of
the container per se.
Id. at 541-42; see also, e.g., Soccer Sport Supply, 507 F.2d at 1403 (advertising
displaying the design at issue along with word marks lacked the “nexus” that would
tie together use of the design and the public’s perception of the design as an indicator
of source); In re McIlhenny Co., 278 F.2d 953, 956-57 (CCPA 1960) (promotion of a
bottle design bearing other trademarks is insufficient under Section 2(f) to show that
the public views the bottle design alone as a trademark).
at *18 (TTAB 2022) (social media hashtags of Applicant’s business name undercut argument that the trade dress of the handbag itself had acquired distinctiveness as a source identifier).
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Finally, there’s no way to identify the goods and/or services to which the
advertising pertained.
Applicant’s brief also insists that Applicant engaged in “look for” advertising.171 It
provides four purported examples from the record in its brief to support the
argument:
These photos, which simply depict the proposed mark along with Applicant’s word
marks, do not constitute “look for” advertising. “‘Look for’ advertising refers to
advertising that directs the potential consumer in no uncertain terms to look for a
certain feature to know that it is from that source. It does not refer to advertising
that simply includes a picture of the product or touts a feature in a non sourceidentifying manner.” In re SnoWizard, Inc., No. 87134847, 2018 WL 6923620, at *6
(TTAB 2018) (citation omitted); see also Textron, Inc., 753 F.2d at 1027 (“Although
171 See 11 TTABVUE 11-12.
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Textron has pictured the silhouette of the Bridgeport machine in its operator's
manuals and certain promotional activities, it has not proffered evidence showing
that these promotions focused buyers’ attentions on the shape of the machine or that
the design of the column and ram was featured in any way.”); 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:30 (5th ed. Dec. 2025
update) (“to qualify as evidence supporting acquired distinctiveness (secondary
meaning), the ‘look for’ advertising must promote the specific product shape [or
“nonword design”] at issue and not just draw attention to the goods in general”)
(footnote and internal quotation marks omitted).172 We have scoured the record and
have seen no evidence that Applicant has engaged in any “look for” advertising.
172 For examples of effective “look for” advertising, see Owens-Corning, 774 F.2d at 1125-27 (record reflected effective “look for” advertising of pink color as mark for home insulation where extensive advertising featured Pink Panther cartoon character promoting pink insulation, using slogans “Add another layer of pink to your house,” “Put your house in the pink,” visuals showing igloos encased in pink, a “February Pink Sale” promotion, ads using pink in slogans: Pink of Perfection; The Pink Cooler; Big Pink; Love that Pink; Pink Power; America’s Favorite Pink Product; Tickled Pink; Put your House in the Pink; Up with Pink; Prime Time Pink; Think Pink; Think More Pink; Beat the Cold with Pink; All that Pink; and Plant Some Pink Insulation in your Attic); In re Data Packaging Corp., 453 F.2d 1300, 1304 (CCPA 1972) (mark was a circular ring of contrasting color positioned around hub of a reel of computer tape and “each advertisement contains such statements as ‘A ring of color around the hub of the reel identifies it as a quality reel with an aluminum winding surface from DATA PACKAGING CORPORATION,’ and ‘Recognize [appellant’s computer tape reels] by the color-coded Saturn ring around the hub.’”) (cleaned up); In re Hehr Mfg. Co., 279 F.2d 526, 527-28 (CCPA 1960) (red rectangular sticker on which the applicant’s other marks were placed was recognized by itself as a source indicator where record contained evidence of advertising containing “slogans stressing the Red Square as an identifying trademark” such as “phrases such as ‘Always look for the Red Sticker,’ ‘Look for these red stickers, they are your guide to quality,’ ‘These red stickers are your assurance of quality,’ and the like.”); In re Swift & Co., 223 F.2d 950, 953 (CCPA 1955) (although polka dots are a common form of ornamentation, court noted that the evidence showed that “the labels carrying the polka-dot design contain the phrase ‘Pick the Polka Dot Package;’ [and] that this phrase has been used extensively in advertising [the] product”).
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We find that Applicant’s advertising-related evidence does very little to advance
its Section 2(f) claim.
4. Intentional copying and length, degree, and exclusivity of
use
Two other types of evidence or “factors” considered relevant to acquired
distinctiveness are “intentional copying” and “length, degree, and exclusivity of use.”
See Heritage All., 133 F.4th at 1069-70; Converse, 909 F.3d at 1120. As this case is
presented to us, the two categories weave together. Despite submitting a declaration
saying nothing about whether its use was substantially exclusive, Applicant’s brief
argues that its “use has been substantially exclusive … .”173 As discussed above,
however, there is extensive evidence that Applicant’s use of the proposed trade dress
is not substantially exclusive because others in the relevant fields use blue & white
stripes very similar174—and some identical—to Applicant’s blue & white stripes trade
dress. Applicant tries to minimize or deflect this evidence by arguing that this thirdparty use reflects intentional copying and that “such copying proves that Applicant’s
Mark has acquired distinctiveness.”175
173See 11 TTABVUE 15. “Attorney argument is not evidence.” Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (citation omitted); see also In re Simulations Publ’ns, Inc., 521 F.2d 797, 798 (CCPA 1975) (“Statements in a brief cannot take the place of evidence.”) (citation omitted).
174 When a word mark is highly descriptive, “the third-party uses do not have to be identical” to undercut an assertion of substantially exclusive use and acquired distinctiveness. SaintGobain Corp v. 3M Co., No. 91119166, 2007 WL 2509515, at *20 (TTAB 2007) (citation omitted). The same principle applies to trade dress that is “a mere refinement of a common, basic design.” Goodyear Tire and Rubber Co. v. Interco Tire Corp., No. 91096404, 1998 WL 998958, at *16 (TTAB 1998); accord Kohler Co. v. Honda Giken Kogyo K.K., No. 91200146, 2017 WL 6547628, at *41 (TTAB 2017).
175 See id. at 20.
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Multiple examples of third-party use of the proposed trade dress is a serious
problem for Applicant’s Section 2(f) claim because, under the statutory definition of
a trademark, the purported trademark must “satisfy[ ] the most important part of the
statutory definition of a trademark,” which is both to “identify and distinguish”
source. Qualitex, 514 U.S. at 162 (emphasis added) (quoting 15 U.S.C. § 1127); see
also Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 146 (2023) (“a
trademark is not a trademark unless it identifies a product’s source (this is a Nike)
and distinguishes that source from others (not any other sneaker brand)”)
(emphasis added; citation omitted); USPTO v. Booking.com BV, 591 U.S. 549, 552
(2020) (“A trademark distinguishes one producer’s goods or services from another’s.”);
id. at 553 (“Prime among the conditions for registration, the mark must be one ‘by
which the goods of the applicant may be distinguished from the goods of others.’”)
(citing 15 U.S.C. § 1052); Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189,
198 (1985) (trademarks allow consumers “to distinguish among competing
producers”). “When the record shows that purchasers are confronted with more than
one (let alone numerous) independent users of a term or device, an application for
registration under Section 2(f) cannot be successful, for distinctiveness on which
purchasers may rely is lacking under such circumstances.” Levi Strauss, 742 F.2d at
1403; see also ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 1278,
1290 n.5 (Fed. Cir. 2010) (affirming finding of lack of acquired distinctiveness of the
color blue as applied to endoscopic tubes where “at least one of ERBE’s competitors
uses blue flexible endoscopic probes—and thus the requisite secondary meaning is
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missing here”). In other words, use of the same proposed mark by others undercuts
an Applicant’s ability to show its use, however long, was “substantially exclusive,” as
required by Section 2(f).176 See also Ayoub, Inc. v. ACS Ayoub Carpet Serv., No.
91211014, 2016 WL 4474509, at *13 (TTAB 2016) (“[T]he widespread use of the
surname Ayoub by unaffiliated rug, carpet and flooring businesses is inconsistent
with Applicant’s claim of acquired distinctiveness of AYOUB. Indeed, the
proliferation of such uses clearly shows that Applicant’s use is not ‘substantially
exclusive.’”) (citation omitted).
As our discussion above laid out in detail, there is voluminous evidence in the
record of other restaurants, ice cream and Italian ice parlors, and producers of
packaged ice cream, frozen confections, and various beverages who use or have used
blue & white vertical stripes in connection with these goods and services. Applicant
tries to minimize this evidence by labelling these uses as infringements of Applicant’s
trademark rights.177 It is true that infringing or otherwise inconsequential uses do
not count against an applicant seeking to prove acquired distinctiveness. See, e.g.,
Galperti, 17 F.4th at 1147; L.D. Kichler Co. v. Davoil Inc., 192 F.3d 1349, 1352 (Fed.
176 It does not matter whether the third parties use the trade dress as a source identifier or in a non-source-identifying way, like descriptively or ornamentally. See, e.g., Galperti, Inc. v. Galperti S.R.L., 17 F.4th 1144, 1148 (Fed. Cir. 2021) (“a significant amount of marketplace use of a term not as a source identifier for those users does tend to undermine an applicant’s assertion that its own use has been substantially exclusive”); see also Gen. Mills IP Holdings, 2017 WL 4082590, at *7 (“[C]ustomers accustomed to seeing numerous brands from different sources offered in yellow packaging are unlikely to be conditioned to perceive yellow packaging as an indicator of a unique source. Rather, they are more likely to view yellow packaging simply as eye-catching ornamentation customarily used for the packaging of breakfast cereals generally.”) (punctuation altered).
177 See 11 TTABVUE 20-22.
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Cir. 1999); Ayoub, 2016 WL 4474509, at *13. On the other hand, it’s not enough for
an applicant simply to label all others’ use of the device as “infringing” or
“inconsequential.” “Elimination of ‘infringements’ is a matter for the courts, not the
PTO, and the mere assertion that all other users are infringers cannot substitute for
the required showing of specific facts in support of a potential finding that [the alleged
mark] has acquired distinctiveness as an indication of a single source or quality
standard for shoes.” Levi Strauss, 742 F.2d at 1403 & n.1.
Applicant has provided no evidence that it ever even tried to enforce its alleged
rights in the stripes trade dress against anybody, let alone evidence of a court
judgment that any of the many third parties using the same (or similar) stripes are
infringers. Cf. Malaco Leaf, AB v. Promotion In Motion, Inc., 287 F. Supp. 2d 355, 364
(S.D.N.Y. 2003) (“Malaco’s failure to police its trade dress for decades is further
evidence that the Swedish Fish trade dress is weak and has not acquired
distinctiveness.”) (citations omitted). Nor has Applicant provided any evidence that
any of the third-party use of the same or similar stripes was undertaken to benefit
from any goodwill associated with Applicant’s stripes trade dress—as opposed to a
desire to use a common, visually pleasing form of ornamentation—or even that they
know of Applicant at all. Infringement is use in a way that seeks to profit from the
senior user’s goodwill. See, e.g., Stuart Spector Designs, Ltd. v. Fender Musical
Instruments Corp., No. 91161403, 2009 WL 1017284, at *26 (TTAB 2009) (“copying is
only evidence of secondary meaning if the defendant’s intent in copying is to confuse
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consumers and pass off his product as the plaintiff’s”) (cleaned up; citation
omitted).178
We therefore reject Applicant’s dismissal of these multiple instances of third-party
use, and we also reject Applicant’s contention that “extensive copying”179 supports its
claim of acquired distinctiveness. In short, the multiple examples of others in
Applicant’s fields using the same or similar stripes in the same ornamenting fashion
present a seemingly insurmountable hurdle to Applicant’s Section 2(f) claim,
irrespective of any “efforts” to establish acquired distinctiveness in its proposed trade
dress. See, e.g., Levi Strauss, 742 F.2d at 1403; Gen. Mills IP Holdings, 2017 WL
4082590, at *6 (“non-exclusive use presents a serious problem for the merchant
seeking to develop trademark rights in a word, symbol, or device that is not inherently
distinctive, because it interferes with public perception that it serves as an indicator
of a single source”) (citing Owens-Corning, 774 F.2d at 1127 (“A color which is
employed by others in the industry acts not as an indicator of source but as mere
ornamentation.”)).
5. Collective assessment of Applicant’s Section 2(f) evidence
As we mentioned above, proving a claim of acquired distinctiveness under Section
2(f) requires not only evidence of an applicant’s “substantially exclusive and
178 Though Applicant does not elaborate on why it believes some of these uses by others of the same or similar stripe trade dress are “inconsequential,” we note the evidence in this case exposes an unexplained inherent contradiction in that argument: how is it that, when others use stripes in a manner identical or similar to Applicant, their uses are inconsequential, but Applicant’s use results in the establishment of trademark rights?
179 See 11 TTABVUE 19-20.
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continuous use” of the mark in sales and advertising—i.e., its “efforts in educating
the public to associate the proposed mark with a single source,” Palacio Del Rio, 2023
WL 3751118, at *13 (punctuation altered)—but also the “effectiveness” or “success”
of those efforts, see id.; Owens-Corning, 774 F.2d at 1125. Here, the magnitude of
Applicant’s advertising efforts do not appear to have been substantial. In addition,
the evidence of Applicant’s “efforts” (advertising and social media) discloses no direct
attempt to educate consumers that the stripes trade dress indicates a unique source
for the relevant goods and services, nor does it reveal or even suggest any indirect or
subliminal efforts towards that goal. Moreover, there is no evidence whatsoever as to
the effectiveness or success of Applicant’s alleged efforts to create the required unique
association.
But even if Applicant had made concerted efforts to educate consumers to regard
the stripe pattern as uniquely indicating Applicant’s goods and services, the plethora
of third-party uses of blue & white or similar stripes in connection with the same
goods and services presents a nearly insurmountable hurdle for any such effort to
succeed because they show that such use has not been “substantially exclusive.” See,
e.g., Levi Strauss, 742 F.2d at 1403; Ayoub, 2016 WL 4474509, at *13. We find that
Applicant has not come anywhere close to proving its alternative claim that the
proposed trade dress has acquired distinctiveness.
Decision: We deem Applicant’s May 17, 2024, substitute specimen acceptable and
therefore reverse the refusal under Sections 1 and 45 as to Applicant’s Class 35
services. We accept, for purposes of this appeal, Applicant’s October 11, 2024,
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proposed amendment to the description of the proposed mark. But we affirm the
refusal to register the proposed mark under Sections 1, 2, 3 and 45 as applied to the
goods and services in International Classes 29, 30, 32, 33, 35, and 43 (i.e., all
identified classes) because the proposed mark is not inherently distinctive and
Applicant failed to prove its claim, in the alternative, that the proposed mark has
acquired distinctiveness under Section 2(f).
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