In a precedential decision in In re Fantasia Distribution Inc, Serial 86185623 (September 21 2016), the Trademark Trial and Appeal Board (TTAB) held that a repeating diamond design pattern appearing on an electronic hookah was merely decorative and ornamental, and therefore not inherently distinctive enough to function as a trademark. In addition, the TTAB upheld the examining attorney’s finding that the pattern had not been used sufficiently to claim acquired distinctiveness.

The applicant, Fantasia Distribution Inc, sought to register the pattern, described as repeating rows of diamonds appearing on the lower third of an electronic hookah device (see figure below).

The TTAB rejected the applicant’s claim that the proposed mark was inherently distinctive, considering the factors from Seabrook Foods Inc v Bar-Well Foods Ltd, namely:

  • the nature of the goods and whether there was an industry practice of ornamenting such goods;
  • the nature of the pattern, including whether the elements of the pattern standing alone would be source-identifying;
  • whether the pattern was common, and whether it was comprised of common or unusual repeating shapes;
  • how the pattern appears on the product, including the size and location, and how much of the product was covered by the pattern; and;
  • whether the pattern created a distinct commercial impression apart from any other word or design elements.

The examining attorney noted that there was an industry practice of applying ornamental design features near the bottom of electronic hookahs, and that consumers were therefore more likely to view this as a decorative feature, rather than as a trademark. The TTAB also noted that the presence of other elements on the e-hookah, such as the name ‘Fantasia’ along with a stylised hookah logo, created a crowded product design that further weakened the ability of the repeating diamond pattern to serve as a trademark.

The TTAB rejected the applicant’s evidence of distributors referring to its product as the ‘diamond series’ or ‘diamond e-hookahs’ as unpersuasive in light of the weight of evidence showing the product consistently being called ‘Fantasia’ and including a stylised logo.

The TTAB also held that there was insufficient proof to establish acquired distinctiveness in the pattern design as “an indicia of origin for goods originating exclusively with the Applicant”. The applicant principally pointed to a YouTube review of the e-hookah, in which the reviewer noted the diamond pattern, along with internet advertisements which identified the goods as ‘Fantasia Diamond E-Hookahs’ or ‘Fantasia Diamond Series E-Hookahs’. The applicant also provided evidence of third-party copying, with an eBay seller promoting ‘Fantasia E Hookah’ products which included the repeating diamond pattern.

The TTAB held that the evidence failed to establish that the repeating pattern was recognized by consumers as a trademark. It noted the lack of ‘look for’ advertising, which specifically highlighted the diamond pattern, or other evidence that the diamond pattern alone was being used as a source identifier. Similarly, the YouTube review, internet advertising and even the eBay copy product all included the ‘Fantasia’ mark and logo in addition to the diamond pattern, which the TTAB said showed that the diamond pattern, taken by itself, did not serve as a source-identifying trademark.

Fantasia’s product packaging also damaged its claims, since the diamond pattern mark was not visible through the transparent window on the product box. While the ‘Fantasia’ name and hookah logo do appear through the window, the diamond pattern was obscured by the opaque part of the box. The TTAB found this to show that the repeating diamond pattern did not create a distinct commercial impression apart from the wording and other designs appearing on the electronic hookah.

This case highlights the difficult barrier applicants must overcome to register repeating pattern designs as trademarks. Indeed, the latest edition of the US Patent and Trademark Office Trademark Manual of Examining Procedure (TMEP) specifically addresses the typical lack of inherent distinctiveness of repeating design patterns, and the tendency of such patterns to serve an ornamental function. While this edition of the TMEP was published after the initial application, future applicants should note its guidance to examiners, and this latest precedential decision further emphasizes the barriers faced by applicants trying to register such marks.

The article was originally published on November 9th, 2016 in the World Trademark Review (WTR).