The University of Alabama (“University”) and the estate of Paul Bryant (a legendary football coach at the University who passed away in 1983) claimed rights in a houndstooth pattern and opposed the registration of a design mark for clothing consisting of the words HOUNDSTOOTH MAFIA displayed against a houndstooth background:
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Given that houndstooth is a known textile pattern, the key question that the TTAB considered was whether the University could establish proprietary rights.
As an initial matter, the TTAB found that the University could not have acquired trademark rights in the pattern from Coach Bryant or his estate. Although it was undisputed that Coach Bryant was well known for wearing houndstooth-patterned fedoras at the University’s football games, there was no evidence that Bryant ever used the pattern as a trademark in connection with any products or services.
With respect to the University’s use of the pattern, much of the evidence submitted by the University failed to show trademark use. For instance, the University pointed to various promotional publications, including yearbooks, sports programs, and brochures, featuring Coach Bryant wearing a houndstooth-patterned fedora. The TTAB found that these uses merely showed ornamental use of a houndstooth fabric pattern, and not use that created any association between the pattern and any services offered by the University.
Although the University did use the pattern on apparel products, it had to establish common-law rights(as it did not own a federal registration) and prove the pattern was either inherently distinctive or had acquired distinctiveness. While the TTAB did not rule out the possibility that a houndstooth pattern could be inherently distinctive depending on the manner in which it was used, the evidence showed the University’s use was ornamental insofar as the pattern was employed merely as a background design on the surface of apparel products that contained one or more of the University’s other trademarks. Applying the test set forth in Seabrook Foods Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977), the TTAB concluded that such use of a known fabric pattern design as background was not “unique or unusual” and was highly unlikely to create a distinct commercial impression.
With respect to acquired distinctiveness, the TTAB noted that a party seeking to establish acquired distinctiveness in a common or ornamental pattern has an “unusually heavy burden.” Also, because the University’s houndstooth pattern was a background design used in conjunction with other trademarks, the University was required to prove that the pattern acquired distinctiveness separately and apart from any other University indicia. Applying this standard, the TTAB found there was no evidence showing that the University ever promoted its houndstooth pattern separately (for instance, through “look for” advertising) or that the pattern created a separate commercial impression apart from the University’s other marks. The University also failed to provide any survey evidence. Although the University offered testimony that it licensed the houndstooth pattern, it did not provide copies of the license agreements and there was no evidence that the pattern itself (as opposed to the University’s other marks) was the subject matter of the agreements. Likewise, although the University submitted evidence of substantial sales of licensed apparel ($330 million over a five-year period), the sales figures did not break down the actual dollar amount of sales for merchandise bearing the pattern. The TTAB also found it significant that the University’s graphic-standards manuals from 2010-2012 setting forth the guidelines for reproducing the University’s trademarks did not even identify the houndstooth design as one of the University’s marks. Finally, there was substantial evidence of third-party use of the pattern for apparel items that undermined the University’s claim of trademark rights. All of the above left the TTAB with little basis to find that the houndstooth pattern had acquired distinctiveness.
This case is a useful reminder that the standard for establishing trademark rights in common patterns is extremely high, particularly when the pattern is used only as a background design in conjunction with other trademarks. Unless it can be proven that the pattern itself is distinctive, separate and apart from any other indicia, the use of the pattern will likely be considered ornamental and unprotectable.