Patterns others in the field already use are ornament, judged class by class

A repeating pattern claimed as trade dress is tested for distinctiveness one class at a time, and the test is the same for services as for goods. Where the pattern is a basic ornament, a few other users in a class can show that it is not inherently distinctive there. Where many others use it, a claim of acquired distinctiveness under §2(f) faces what the Board called "a nearly insurmountable hurdle" (slip op. at 65). None of these pieces is new on its own. The inherent-distinctiveness test comes from Seabrook Foods as restated in Chippendales, and the Board's 2016 Fantasia decision adapted it for repeating patterns on goods. The per-class requirement rests on Bayer and on the text of §2(e) and §2(f), and the third-party-use rule on Levi Strauss. The precedential opinion puts them together for trade dress used across goods, restaurants and franchising, and it shows how little third-party evidence the Board will require for a common ornament.

The rule

Inherent distinctiveness. Packaging and décor trade dress can be inherently distinctive. It is not if it is a common basic design, is not unique or unusual in the field, or is a mere refinement of a well-known form of ornamentation (at 22–23). Fantasia adapted those questions for repeating patterns: industry practice of ornamenting the goods, the nature of the pattern, how common it is, how it appears on the product, and whether it creates an impression apart from accompanying words (at 23–24). The Board said in a footnote that Fantasia "is easily applied to services" (at 24 n.36). Following Soccer Sport Supply, it repeated that a repeating pattern is not absolutely foreclosed from being inherently distinctive (at 23).

Class by class. Distinctiveness is assessed for the identified goods or services, not in the abstract, so the Board assessed inherent distinctiveness for each class (at 25). It said the same applies to acquired distinctiveness (at 25 n.40, 55).

How much third-party evidence is enough. The amount scales with how basic the design is. Relying on Chippendales, where one prior user (Playboy) supported a finding of no inherent distinctiveness, the Board held that a few users of striped ornamentation sufficed in a class with thin evidence, because stripes are "a rudimentary form of ornamentation" (at 32–33). Evidence from one class can carry over to a related one. Because food-service franchising involves standards of "ambiance and décor", restaurant evidence was relevant to franchising services (at 40).

Acquired distinctiveness. The applicant bears the burden, and doubt is not resolved in its favor (at 43–44). For a commonly used ornament the burden is "relatively difficult" (at 45–46). Third-party use undercuts substantially exclusive use whether or not the third parties use the pattern as a mark (at 62 n.176). Infringing uses do not count against an applicant, but the applicant must show they infringe. "Elimination of 'infringements' is a matter for the courts" (at 62–63). Sales and advertising figures carry little weight without context against competitors, when lumped across classes, or when the pattern always appears with a word mark (at 53–57). "Look for" advertising must direct consumers to the feature itself. Advertising that simply pictures it does not qualify (at 58–59).

Limits. The fourth Seabrook question, whether the design creates an impression apart from accompanying words, was not reached because the drawing contained no words (at 23 n.34, 24 n.35). Third-party evidence has no fixed time cut-off, though use older than five years may be less probative (at 20). The Board disregarded foreign uses for lack of evidence of U.S. consumer exposure, and stock images and mock-ups (at 20).

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What it changes

The following is the editors' view, not part of the decision.

• Search the field before filing. If an image search finds others using a similar pattern in a class, an inherent-distinctiveness argument in that class is weak, and a few results may be enough to sink it.
• Argue the right test. An inherent-distinctiveness argument has to engage Seabrook, Chippendales and Fantasia. Length of use and sales answer a different question.
• Build §2(f) evidence per class and around the pattern alone. Break out sales and advertising by class, include the advertisements themselves, give a market comparator, and consider a survey. None was offered here (at 43 n.138).
• Enforce, or expect third-party use to count. A brand owner that never objects to other users will not be able to call them infringers on appeal.
• Consider the narrower filing. Dropping weak classes, or registering the pattern with the word mark, may be the realistic route.

The case

Ralph's Famous Italian Ices, which says it has used blue-and-white vertical stripes on storefronts and products since 2004, applied in November 2020 to register the pattern in six classes, claiming acquired distinctiveness in the alternative (at 1–3 & n.4). The record held at least eleven sellers of shakes with blue-and-white stripes, a longer list for frozen confections and ices, and "plentiful" restaurant examples (at 26–39). Fruit drinks had five users and Class 33 two blue-and-white users and six variants. One competitor used the same stripes to promote its franchises (at 31–35, 39). The applicant's brief never applied the inherent-distinctiveness test (at 24–25). Its §2(f) case rested on more than $110 million in sales over twenty years, about $2 million in advertising without exemplars, and press coverage that showed the stripes mostly alongside the RALPH'S FAMOUS word mark. Its declaration never averred "substantially exclusive" use (at 46–57). The Board affirmed the refusal in every class (at 65–66).

Data angle

The Board tallied third-party users per class and treated the count as the evidence of commonness. It discounted every applicant figure that came without a denominator. "One way to help sales figures and customer numbers have more 'oomph'" is to show "how an applicant's numbers stack up compared to those of its competitors" (at 54).

Smaller holdings

Specimen (reversed). A franchisee order-portal login page, with a declaration explaining that franchisees use it to order approved supplies, showed the mark "as used in rendering a part of the identified services" (at 14). A service specimen may show the mark in rendering the service, not only in selling or advertising it (at 14 n.22). A blurry second screenshot failed Rule 2.56(c) (at 9).

Description. Where the stripes could reasonably be described as equal or unequal in width, the Board applied TMEP §808.02 and accepted the applicant's characterization (at 17–18).