Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DIMITRI'S INC.
Serial No. 565,815
November 14, 1988
Gordon Needleman for Dimitri's Inc.
Jeri J. Fickes
Trademark Examining Attorney
Law Office 5
(Paul Fahrenkopf, Managing Attorney)
Before Krugman, Cissel and Quinn
Members
Opinion by Quinn
An application has been filed by Dimitri's, Inc. to register the term "SUMO" for "wearing apparel, namely t-shirts and baseball-style caps." [FN1]
Registration has been finally refused under Sections 1, 2 and 45 of the Trademark Act on the ground that the term "SUMO", as used on the goods, is merely ornamental and, as such, does not function as a trademark in that it does not serve to identify applicant's goods and distinguish them from like goods of others. [FN2]
Applicant has appealed, asserting, in essence, that the term sought to be registered has acquired secondary meaning and does, in fact, indicate source or origin of the goods.
Applicant's specimens comprise photographs of shirts bearing the term "SUMO" as shown below.
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Matter which serves as part of the aesthetic ornamentation of goods, such as T-shirts and hats, may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function: See: In re Watkins Glen International, Inc., 227 USPQ 727 (TTAB 1985), citing In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) and In re Olin Corp., 181 USPQ 182 (TTAB 1973).
As the Board stated in the Olin Corp. case (where applicant sought to register, for T-shirts, an arbitrary design which was used by applying it to the face of the T-shirts, but which had previously been registered by applicant for skis), at pages 182-183:
It is a matter of common knowledge that T-shirts are "ornamented" with various insignia, including college insignias, or "ornamented" with various sayings such as "Swallow Your Leader." In that sense what is sought to be registered could be construed to be ornamental. If such ornamentation is without any meaning other than as mere ornamentation it is apparent that the ornamentation could not and would not serve as an indicia of source. Thus, to use our own example, "Swallow Your Leader" probably would not be considered as an indication of source.
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 manufacture but the secondary source. Thus, the name "New York University" and an illustration of the Hall of Fame, albeit it will serve as ornamentation on a T-shirt will also advise the purchaser that the university is the secondary source of that shirt. It is not imaginable that Columbia University will be the source of an N.Y.U. T-shirt. Where the shirt is distributed by other than the university the university's name on the shirt will indicate the sponsorship or authorization by the university.
*2 In the case before us, the T-shirt is ornamented with applicant's trademarks, and considering the nature of T-shirts, that particular ornamentation can serve as an indication of a secondary source of origin. The matter sought to be registered is an arbitrary symbol and can and does function as a trademark. As used on the T-shirts, we conclude that the mark serves as an identifier of a secondary source and as such is registrable.
Such matter may also be found to be registrable if applicant submits other evidence (such as evidence of promotion of the matter as a mark, survey evidence demonstrating purchaser perception of the matter as a mark, etc.) showing that purchasers recognize the matter as an indication of the source of the goods. See, for example: In re David Crystal, Inc., 296 F.2d 771, 132 USPQ 1 (CCPA 1961).
Applicant, in support of its claimed right to registration in this case, has submitted seventeen identical statements signed by customers. Each customer states that he is familiar with applicant's product; that applicant consistently uses the mark "SUMO" on its goods, and in its advertising and letterhead; and that he recognizes the word "SUMO" as a trademark of applicant in that the mark identifies goods manufactured by applicant. Applicant also has submitted a copy of an advertisement that appeared in six editions of the P-Town Weekly in Provincetown, Massachusetts. The record also contains three photographs showing use of "SUMO" in connection with a different sumo wrestler design on T-shirts; "SUMO KIDS" and design on T-shirts; and "SUMO" and design on hats. Applicant contends that the photographs show use of the mark "SUMO" in connection with a continuing series of garments. The record contains neither information regarding the extent of applicant's sales of T-shirts and hats bearing the term "SUMO" nor the extent of advertising and circulation of P-Town Weekly.
Where, as here, an alleged mark serves as part of the aesthetic ornamentation of the goods, the size, location, dominance and significance of the alleged mark as applied to the goods are all factors which figure prominently in the determination of whether it also serves as an indication of origin.
In the present case, "SUMO" appears in large lettering across the top-center portion of the T-shirts and caps. "Dimitri's" appears in the lower left corner of the design. [FN3] The evidence of record shows that the term "SUMO" always appears in connection with stylized representations of sumo wrestlers. Thus, we agree with the Examining Attorney that the term "SUMO" has a highly suggestive significance in relation to the rest of the ornamental matter on the goods. Accordingly, it is our view that the term "SUMO" is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's T-shirts and hats.
Applicant's evidence does not dissuade us from this conclusion. With respect to the statements from its customers, we do not believe that they merit such probative value as to justify allowance of the application. The statements are form statements, undoubtedly prepared by counsel, which set forth a legal conclusion, that is, that the term "SUMO" acts as a trademark to identify applicant's goods. The existence of a relatively small number of people who associate the term "SUMO" with applicant is simply insufficient for us to find that the term functions as a trademark for applicant's goods. As pointed out by the Examining Attorney, the facts of the present case, including the nature of the mark, are sufficiently distinct from those in prior cases where the Board found form declarations to be persuasive in support of registration. See, e.g., In re Petersen Manufacturing Co., Inc., 229 USPQ 466 (TTAB 1986); and In re Omni Spectra, Inc., 143 USPQ 458 (TTAB 1964).
*3 We also do not believe that the advertisement showing use of the term "SUMO" supports the proposition that the matter sought to be registered functions as a trademark. The advertisement shows the term "SUMO" with a superimposed drawing of the upper body and head of a sumo wrestler. The name "Dimitri's" and applicant's address appear below in smaller script. The advertisement itself shows use of the mark merely in an ornamental fashion; it does not promote the term "SUMO" as a mark. While the advertisements in six editions of a newspaper may show the effort made to acquire distinctiveness for an ornamental feature, this evidence does not show the success of such effort. As indicated above, our opinion is that the form statements are not probative in demonstrating such success.
In view of the above, we conclude that the term "SUMO" serves merely as an ornamental feature of applicant's goods and does not function as a trademark therefor.
Decision: The refusal to register is affirmed.
G. D. Krugman
R. F. Cissel
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 565,815, filed October 29, 1985, alleging dates of first use of June 1, 1985.
FN2. The final refusal also was based on applicant's failure to comply with the Examining Attorney's requirement that applicant identify certain matter that is shown on the specimens of record. Applicant, with its notice of appeal, filed an amendment on November 16, 1987 wherein applicant identified the matter as "Dimitri's," a reference to applicant. Upon remand, the Examining Attorney, on February 8, 1988, withdrew the final requirement. The application file then was forwarded to the Board for consideration of the final refusal now before us.
FN3. We are not convinced that purchasers would be likely to make an association between the term "SUMO" and applicant's name "Dimitri's." The name appears in small, highly stylized script in a corner of the overall design of the T-shirts. We further note that the name does not appear in the photograph of the hat.