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College T-shirts and Trademarks – Ornamental, or Protectable? – JD Supra

Faegre Drinker Biddle & Reath LLP
As college freshmen head to campus for the start of classes, there is one vital campus bookstore purchase before classes begin: a T-shirt bearing the college’s logo. This purchase is not only a rite of passage for freshmen; it also touches on an important concept in trademark law: ornamental use of trademarks on T-shirts.
Under sections 1, 2, and 45 of the Trademark Act, the United States Patent and Trademark Office (“PTO”) can refuse registration of a trademark on the ground that the applied-for matter is decorative and therefore does not function as a mark because it is merely ornamentation. In re Peace Love World Live, LLC, 127 U.S.P.Q.2d 1400 (TTAB 2018). Ornamental matter can include words, designs, slogans, or trade dress.
In determining whether to refuse registration of a trademark on the ground that the applied-for mark is merely ornamentation, the PTO considers the following factors:
(1) the commercial impression of the proposed mark;
(2) the relevant practices of the trade;
(3) secondary source, if applicable; and
(4) evidence of distinctiveness.
(See TMEP § 1202.03 et seq.)
The “critical question” as to whether applied-for matter functions as a trademark “is the commercial impression it makes on the relevant public, i.e., whether the term sought to be registered would be perceived as a mark identifying the source of the goods.” In re Peace Love World Live, LLC, 127 U.S.P.Q.2d at 2. If the commercial impression of an applied-for mark is purely ornamental or decorative, then it does not function as a trademark and is unregistrable on either the Principal Register or the Supplemental Register. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:24 (5th ed. 2019).
In In re Olin Corp., the Trademark Trial and Appeal Board (“TTAB”) acknowledged that insignia can simultaneously be decorative and source-identifying. There, the TTAB recognized that “T-shirts are ‘ornamented’ with various insignia, including college insignias” and “if such ornamentation is without any meaning other than as mere ornamentation” then the ornamentation is not considered an “indicia of source.” 181 USPQ 182, 182 (TTAB 1973).
However, “the ‘ornamentation’ of a T-shirt can be of a special nature which inherently tells the purchasing public the source of the T-shirt, not the source of the manufacture but the secondary source.” Id. For example, “New York University and an illustration of the Hall of Fame” serves “as ornamentation on a T-shirt” and also “advise[s] the purchaser that the university is the secondary source of that shirt.” Id. Therefore, the TTAB held that, when “considering the nature of T-shirts,” the ornamentation could indicate a secondary source of origin. Notably, the TTAB limited its ruling to how the mark was “used on the T-shirts.”
Applying the principles set forth in Olin, the U.S. District Court for the Northern District of California in Macy’s Inc. v. Strategic Marks, LLC stated that the PTO “has long held that ornamentation on apparel, including shirts manufactured by third parties, qualify as trademark use if the particular ornamentation serves as an indication of a secondary source of origin, e.g., the source of a shirt other than the direct manufacturer.” No. 11-CV-06198-EMC, 2016 WL 374147, at *3 (N.D. Cal. Feb. 1, 2016). The Court further explained in dicta that, “[f]or example, if a t-shirt with the stylized ‘Cal’ logo was sold, Champion may be the direct manufacturer but the University of California, Berkeley, would be the secondary source that authorized Champion to produce and distribute the shirt bearing the school’s registered trademark.”
Similarly, the PTO has applied Olin to other cases involving T-shirts and determined that “marks such as ‘EXPO ’74’ and ‘Mork & Mindy’ are protectable trademarks that identify secondary sources because although the mark was ‘certainly part of the ornamentation,’ they ‘also indicate[d] source or origin in the proprietor of the [mark] in the same sense as the stylized ‘O’ in Olin.’ Id. (citing In re Paramount Pictures Corp., 213 U.S.P.Q. 1111, 1113 (1982); In re Expo ’74, 189 U.S.P.Q. 48, 49 (1975)).
If the PTO initially refuses registration of a trademark on the basis that it is merely ornamentation, an applicant may still qualify for registration on the Principal Register by submitting “proof of a secondary source.” In other words, the applicant can submit proof that its goods bearing ornamental matter complement and promote the applicant’s other, more primary goods and/or services. (SeeHow to establish use as an indicator of secondary source”).
The PTO explicitly states that, in the college T-shirt context, a university may register its university logo for T-shirts via the “secondary source” rule because “selling t-shirts is supplementary to the university’s primary function of providing educational services.” (SeeHow to establish use as an indicator of secondary source”). Therefore, if the “university receives an ornamental refusal when submitting a picture of a t-shirt with the university logo across its front, the university may submit evidence that it provides educational services under the same mark (such as a prior registration) to overcome the ornamental refusal.” Id.
In sum, certain ornamentation on apparel manufactured by a third party can be registered as a trademark use if the applicant can prove that the ornamentation indicates a secondary source. This enables colleges to assert that their logos are source identifiers, thus rendering the logos eligible for registration for apparel even if the colleges themselves do not manufacture the apparel.
A little food for thought on your next visit to a campus bookstore!
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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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