Fantasia Distribution, Inc.

                                 This Opinion Is a
                               Precedent of the TTAB

                                                       Mailed: September 21, 2016



                 UNITED STATES PATENT AND TRADEMARK OFFICE

                                        _____

                         Trademark Trial and Appeal Board

                                        _____

                          In re Fantasia Distribution, Inc.

                                        _____

                                Serial No. 86185623

                                        _____


James Denison, Esq.
  for Fantasia Distribution, Inc.

April Roach, Trademark Examining Attorney, Law Office 115,
  John Lincoski, Managing Attorney.

                                        _____

Before Kuhlke, Masiello, and Lynch,
      Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

 I.     Background

      Fantasia Distribution, Inc. (“Applicant”) seeks registration on the Principal

Register of the repeating-pattern trade dress mark shown below for “Electronic

hookahs” in International Class 34:
Serial No. 86185623




                            The mark is described as follows: “The mark consists of the

                            design of repeating rows of diamonds applied to the goods

                            which appear on the lower third of the cylinder of the hookah

                            device; the dotted lines indicate the placement of the mark and

                            are not claimed as [a] feature of the mark.”1

       The Examining Attorney refused registration under Sections 1, 2 and 45 of the

    Trademark Act, 

15 U.S.C. §§ 1051

, 1052, and 1127, on the ground that the proposed

    mark constitutes merely ornamental matter and does not function as a mark for the

    goods. Although Applicant maintained that its proposed mark is inherently

    distinctive, Applicant claimed, in the alternative, acquired distinctiveness under

    Section 2(f) of the Trademark Act, 

15 U.S.C. § 1052

(f). The Examining Attorney

    deemed the evidence of acquired distinctiveness insufficient.

       We note that the Examining Attorney’s ornamental refusal issued prior to the

    June 2015 examination guide, later incorporated into the TMEP, specifically

    concerning proposed repeating pattern marks. See TMEP § 1202.19 (April 2016).

    Regardless, the essence of the Examining Attorney’s refusal and analysis of the

    registrability and ornamental nature of Applicant’s repeating-diamond pattern is

    consistent with the guidance therein, which addressed potential lack of inherent




    1 Application Serial No. 86185623 was filed February 5, 2014, based upon use in commerce

    under Section 1(a), 

15 U.S.C. § 1051

(a).


                                               -2-
Serial No. 86185623


    distinctiveness because “repeating patterns often serve an ornamental function in

    various contexts.” TMEP § 1202.19(e)(i).

          After the Examining Attorney made the refusal final, Applicant appealed. We

    affirm the refusal to register on the ground that the proposed mark fails to function

    as a trademark because it is a non-distinctive, merely ornamental pattern that has

    not acquired distinctiveness.

    II.      Failure to Function as a Trademark

          Section 45 of the Trademark Act defines a “trademark” in relevant part as “any

    word, name, symbol, or device, or any combination thereof used by a person. . . to

    identify and distinguish his or her goods. . . from those manufactured or sold by

    others and to indicate the source of the goods, even if that source is unknown.”

    

15 U.S.C. § 1127

. “The critical inquiry in determining whether a designation

    functions as a mark is how the designation would be perceived by the relevant public.”

    In re Eagle Crest Inc., 

96 USPQ2d 1227

, 1229 (TTAB 2010). Subject matter that is

    perceived as merely decorative or ornamental does not identify source and thus fails

    to function as a mark.

          Repeating patterns frequently serve an ornamental function in various contexts

    to decorate goods, such that consumers would not be predisposed to equate the

    repeating patterns with source. In Wal-Mart Stores v. Samara Bros., 

529 U.S. 205, 213

 (2000), the Supreme Court, addressing the issue of trade dress, explained that

    neither color nor product design (as opposed to product packaging) may be inherently

    distinctive because they almost invariably “render the product itself more useful or




                                               -3-
Serial No. 86185623


    appealing,” and consumers therefore are not predisposed to view them as source-

    indicating. By analogy, repeating patterns often appear on goods to render the

    products more visually appealing and, in those situations, would not be considered

    inherently distinctive. Thus, while we do not absolutely foreclose the possibility that

    an inherently distinctive repeating pattern may function as a source-indicator, in

    most cases a repeating pattern on a product serves a decorative purpose and is not

    inherently a source identifier. “‘[N]ot every designation that is placed or used on or

    in connection with a product necessarily functions . . . as a trademark for said product;

    not every designation adopted with the intention that it performs a trademark

    function and even labeled as a trademark necessarily accomplishes that purpose. . . .’”

    In re Hulting, 

107 USPQ2d 1175

, 1177 (TTAB 2013) (quoting Am. Velcro, Inc. v.

    Charles Mayer Studios, Inc., 

177 USPQ 149

, 154 (TTAB 1973)); accord In re Bose

    Corp., 

546 F.2d 893

, 

192 USPQ 213

, 215 (CCPA 1976); In re Standard Oil Co., 

275 F.2d 945

, 

125 USPQ 227, 229

 (CCPA 1960). A pattern may function as a mark only

    “if it is arbitrary and distinctive and if its principal function is to identify and

    distinguish the source of the goods to which it is applied. . . .” See In re Soccer Sport

    Supply Co., 

507 F.2d 1400

, 

184 USPQ 345, 347

 (CCPA 1975).

          A.    Inherent Distinctiveness

       To assess the potential inherent distinctiveness of a repeating pattern appearing

    on a product, such as the mark in this case, we follow Seabrook Foods, Inc. v. Bar-

    Well Foods Ltd., 

568 F.2d 1342

, 

196 USPQ 289

 (CCPA 1977), adapting its factors to

    this context as appropriate, including:



                                              -4-
Serial No. 86185623


        • the nature of Applicant’s goods and whether there is an industry practice of

           ornamenting such goods, see In re Lululemon Athletica Canada Inc., 

105 USPQ2d 1684

, 1689 (TTAB 2013) (considering commercial impression and

           industry practice in assessing inherent distinctiveness of a design appearing

           on clothing); see also Seabrook Foods, 

196 USPQ at 291

 (to assess the inherent

           distinctiveness of a design, considering inter alia, whether a design is “a

           commonly-adopted and well-known form of ornamentation for a particular

           class of goods viewed by the public as a dress or ornamentation for the goods”);

        • the nature of the pattern, including whether any element of the pattern might

           be perceived as source indicating if it were standing alone;

        • how common the pattern is, whether it is composed of common or unusual

           repeating shapes, whether such shapes repeat in a common or unusual

           manner, and whether the overall pattern is similar to, or a mere refinement

           or variation of, a common or well-known form of ornamentation, see 

id.

 (to

           assess the inherent distinctiveness of a design, considering inter alia,

           “whether it was a ‘common’ basic shape or design,” “whether it was unique or

           unusual in a particular field,” and “whether it was a mere refinement of a

           commonly-adopted and well-known form of ornamentation”);

        • the manner in which the repeating pattern appears on the product, including

           the size and location of the pattern on the product and how much of the

           product is covered by the pattern; and




                                             -5-
Serial No. 86185623


        • whether the pattern creates a distinct commercial impression apart from any

           accompanying wording and design elements, see 

id.

 (in assessing inherent

           distinctiveness of the design portion of a composite mark, considering inter

           alia, “whether it was capable of creating a commercial impression distinct

           from the accompanying words”).

    Particular factors may be dispositive as to the lack of inherent distinctiveness,

    without the need for a showing under each factor. See In re Chippendales USA, Inc.,

    

622 F.3d 1346

, 

96 USPQ2d 1681, 1684

 (Fed. Cir. 2010) (in applying the Seabrook test,

    holding that satisfying any of the first three factors applicable in that case would

    render the mark not inherently distinctive).

       Turning to Applicant’s applied-for pattern and whether it is inherently distinctive,

    in making that assessment, we consider the specimens as well as “other evidence

    bearing on the question of what impact [A]pplicant’s use is likely to have on

    purchasers and potential purchasers.” See In re Safariland Hunting Corp.,

    

24 USPQ2d 1380

, 1381 (TTAB 1992). In this case, the consumers would include

    members of the general public. One of Applicant’s specimens, below,2 shows the

    repeating diamond pattern appearing at one end of the electronic hookahs.




    2 February 5, 2014 Application at 3.




                                             -6-
Serial No. 86185623




    The specimen shows that Applicant’s electronic hookahs display near the mouthpiece

    the word FANTASIA in relatively large type, with ELECTRONIC HOOKAH

    appearing in smaller print beneath it, next to a logo that includes the stylized word

    FANTASIA and a design of a traditional hookah pipe. The middle portion of the

    devices features varying wording and colored designs that appear to correspond to

    the flavor of the particular electronic hookah. For example, flavors include: a mixed

    melon flavor named “4 Play,” featuring a pink female silhouette design and pink

    diamond pattern; a flavor of Brazilian Curacao fruit with a citrus twist named “Adios

    M@#%+&!,” featuring a blue cocktail design and blue diamond pattern; and a

    blueberry mint flavor named “Magic Dragon,” featuring a blue and orange dragon




                                            -7-
Serial No. 86185623


    design and blue diamond pattern.3 The color of the wording and design corresponding

    to each flavor matches the color of the diamond pattern appearing on the end of the

    electronic hookah.

       Applicant also submitted evidence of third-party webpages promoting and offering

    its goods, an example of which is shown below.4




    3 Although the full designs and wording for each flavor are not visible on this specimen,

    Applicant submitted other evidence of online promotions and offers to sell its electronic
    hookahs that show the designs and wording and identify the flavors. See February 5, 2015
    Response to Office Action at 7-8, 12-13, 15, 23, 26, 30-31 (webpages identify particular flavors
    and show the corresponding e-hookah and packaging for the flavor).
    4 February 5, 2015 Response to Office Action at 10; see also 

id. at 14

 (an eBay listing for

    Applicant’s electronic hookahs showing the same packaging).


                                                 -8-
Serial No. 86185623




       The webpage includes an image of Applicant’s electronic hookahs as they are

    packaged for sale, although, notably, the applied-for mark is not visible through the

    transparent window of the box in which the goods are sold. The transparent panel of



                                            -9-
Serial No. 86185623


    the box reveals only the portion of the product nearest the mouthpiece (i.e., the end

    opposite from where the diamond design appears), where the FANTASIA name and

    logo appear.

       The Examining Attorney introduced evidence of three other brands of electronic

    hookahs with patterns placed at one end of the hookah device, in a similar manner

    as Applicant’s diamond pattern. First, the Beamer e-hookahs, as displayed below,

    show an arrangement of wording and design elements very similar to that of

    Applicant’s product and feature multi-colored swirls on the opposite end of the device

    from the mouthpiece.5 Nearest the mouthpiece, it features the brand name BEAMER

    in relatively large, stylized typeface. Next to the brand name, it displays colored

    design elements that appear to relate to the flavor, followed by the name of the flavor.

    Finally, as with Applicant’s product, the end of the product is decorated, in this

    example with multi-colored swirls coordinated with the colors for the flavors.




    5 May 19, 2014 Office Action at 2 (http://www.hookah-shisha.com/p-16644-beamer-e-hooka-

    nicotine-free-ehookah.html).


                                             - 10 -
Serial No. 86185623




       The “Platinum Puffs” e-hookahs appearing below show the same general use and

    arrangement of wording, designs, and decorative elements.6 The name PLATINUM

    PUFFS is nearest the mouthpiece, along with a logo-type design element. Toward the

    other end, each e-hookah has a graphic design visually depicting its flavor. At the far

    end, there is a decorative element that features a gray background with three parallel

    stripes in colors matching the designated color for each flavor.




    6 

Id. at 5-6

 (http://www.platinumepuffs.com/disposable-e-hookah).




                                              - 11 -
Serial No. 86185623




       Finally, the “Bentley Grape White Rhino Blacklight” e-hookah devices, below, also

    feature a similarly formatted trade dress.7 The brand name BLACKLIGHT appears

    in large print at one end. Next appears the company name BENTLEY in a contrasting

    band around the circumference of the product. Finally, at the opposite end, there is a

    decorative element that appears to be a repeating pattern of interwoven traditional

    hookah designs.




    7 

Id. at 7-8

 (http://www.hookahcompany.com/bentley-grape-white-rhino-blacklight-e-hookah-

    15620-prd1.htm). The image shown of the devices is split between two pages in the record,
    which we have joined in the excerpt below.


                                             - 12 -
Serial No. 86185623




        The Examining Attorney contends that this evidence demonstrates that the

    placement of ornamental designs “toward the bottom of electronic hookah devices is

    a common practice in the industry,”8 and that consumers would view such designs “as

    a decorative feature of the goods rather than as a trademark.”9 Applicant counters

    that the Examining Attorney failed to meet her burden to establish lack of inherent

    distinctiveness, and claims that the third-party e-hookah designs are completely

    different from its diamond pattern. According to Applicant, the Examining Attorney

    must prove that its diamond pattern is a common one in the industry, or at least that

    it constitutes a mere refinement thereof.



    8 6 TTABVUE 5.

    9 

Id.

                                            - 13 -
Serial No. 86185623


          As to Applicant’s contention that the evidence must specifically show other

    diamond patterns placed on electronic hookahs, such a showing is unnecessary if, for

    other reasons, the public would not perceive the mark as an indicator of source. While

    we consider how common the pattern is, that is but one of numerous factors in the

    inherent distinctiveness analysis, and it is not dispositive. See In re Chippendales

    USA, Inc., 

96 USPQ2d at 1684

. As noted in In re E S Robbins Corp., 

30 USPQ2d 1540

,

    1542 (TTAB 1992), although “applicant’s applied for design may be unique in the

    sense that it is a ‘one and only,’ the record demonstrates that said design is not unique

    in the sense it has an ‘original, distinctive, and peculiar appearance.” Cf. See KP

    Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 

543 U.S. 111, 122

 (2004)

    (noting that the law does not permit “anyone to obtain a complete monopoly on use of

    a descriptive term simply by grabbing it first.”); In re Bailey Meter Co., 

102 F.2d 843

,

    

41 USPQ 275, 276

 (CCPA 1939) ([being] “the first and only one to adopt and use the

    mark sought to be registered does not prove that the mark is not descriptive”); In re

    Preformed Line Products Co., 

323 F.2d 1007

, 

139 USPQ 271

, 273 (CCPA 1963). Even

    if Applicant currently is the only user of a diamond pattern on e-hookahs, this fact

    alone does not imbue the design with source-indicating significance, where

    Applicant’s design merely repeats an ordinary shape in an unremarkable pattern and

    places it on the goods in an unremarkable way.

       Applying the factors set out above, as discussed more fully below, we conclude that

    Applicant’s repeating diamond pattern is not inherently distinctive. One of the

    Internet advertisements Applicant submitted states, “Fantasia Diamond Hookah




                                             - 14 -
Serial No. 86185623


    Pens are designed to look great.”10 We find that the diamond pattern plays a

    significant role in giving the devices an attractive appearance, and that consumers

    would not be predisposed to view this decorative element as source-indicating. See In

    re Chippendales USA, 

96 USPQ2d at 1685

 (citation omitted) (“the focus of the

    [inherent distinctiveness] inquiry is whether or not the trade dress is of such a design

    that a buyer will immediately rely on it to differentiate the product from those of

    competing manufacturers; if so, it is inherently distinctive”).

       Applicant’s e-hookah is crowded with wording and design elements, including the

    diamond pattern which blends with the other elements of the trade dress and does

    not make a distinct commercial impression as a source identifier. See In re Wendy’s

    Int’l, Inc., 

227 USPQ 884

, 886 (TTAB 1985) (finding as part of inherent

    distinctiveness analysis that “the design is not sufficiently unique or distinctive to

    create a commercial impression as a service mark separate and apart from the

    remainder of the matter as shown in the specimens of record”); see also Seabrook

    Foods, 

196 USPQ at 291

 (inherent distinctiveness of a design involved considering

    whether it “was capable of creating a commercial impression distinct from the

    accompanying words”).

        Also, the basic decorative nature of this repeating pattern on the e-hookah

    undercuts Applicant’s claim that consumers would view it as inherently signifying

    source. See In re Hudson News Co., 

39 USPQ2d 1915

, 1923-24 (TTAB 1996)

    (acknowledging that “there is no prohibition against a trade dress mark both


    10 February 5, 2015 Response to Office Action at 12.




                                               - 15 -
Serial No. 86185623


    functioning to indicate source and being aesthetically pleasing” but finding

    applicant’s “pedestrian” interior décor trade dress not inherently distinctive); see also

    Lululemon Athletica, 105 USPQ2d at 1689 (finding applicant’s wave design on

    clothing ornamental without evidence of third-party use of the same or similar wave

    designs, instead noting that the design was “rather simple” and like “piping”).

    Applicant’s mark merely repeats a basic diamond shape to form a highly conventional

    pattern of rows and columns. See Seabrook Foods, 

196 USPQ at 291

; Cf. In re

    Anton/Bauer Inc., 

7 USPQ2d 1380

, 1381 (TTAB 1988) (“common geometric shapes

    such as circles, ovals, triangles, diamonds and stars, when used as backgrounds for

    the display of word or letter marks, are not regarded as trademarks for the goods to

    which they are applied absent evidence of distinctiveness of the design alone”). This

    is not a pattern that repeats, for example, an element already recognized by

    consumers as source-indicating. Moreover, the diamond pattern repeats in an

    unremarkable way, varying only to the extent that the diamond shapes gradually

    increase in size in each row. The size of this pattern contributes to its ornamental

    effect, even though we recognize that no per se rule exists as to ornamentation based

    on the size of a design. In re Lululemon Athletica, 105 USPQ2d at 1689.

        As shown by the other brands of electronic hookahs with colorful designs placed

    in a similar manner at the end of the hookah opposite the mouthpiece, Applicant’s

    pattern is placed in a location that appears to be used often in the industry for

    decorative elements. See id. (considering industry practice in assessing inherent

    distinctiveness).




                                             - 16 -
Serial No. 86185623


         Applicant relies on In re Swift & Co., 

223 F.2d 950

, 

106 USPQ 286

 (CCPA 1955),

    in support of its position that its design is inherently distinctive. As Swift explains,

    however, each case must be decided on its own facts. 

Id. at 288

 (“the merits of each

    case of the character here presented must be individually and accordingly adjudged”).

    Swift involved a mark consisting of polka dot bands on the label of a cleanser

    container, and the specimen showed that the slogan “Pick the POLKA DOT package

    cleanser” appeared on the label with the mark, and the applicant emphasized that

    the slogan was used “extensively in advertising its product.” 

Id.

 In Swift, the Court

    found that the evidence demonstrated that the repeating polka-dot design there

    represented “an unmistakable, certain, and primary means of identification pointing

    distinctly to the commercial origin of such product.”11 

Id. at 289

. The record in this

    case includes nothing analogous,12 and therefore the facts of Swift do not support

    registration in this case.

         We find that Applicant’s repeating diamond pattern applied to the e-hookahs

    would be perceived as ornamentation for the goods and not as inherently distinctive.




    11 We note this type of evidence of use is more commonly used to show acquired
    distinctiveness.
    12 Although Applicant suggests in its brief that its third-party distributors “commonly
    referred to [its product] as ‘Diamond E Hookahs’ and the ‘Diamond Series’ disposable e-
    hookahs,” (4 TTABVUE at 19), the cited evidence repeatedly identifies “Fantasia” as the
    source and frequently refers to the goods as “Fantasia E-Hookahs” or “Fantasia Electronic
    Hookahs.” One advertisement Applicant submitted refers to the “Diamond tip with LED light
    on end” (February 5, 2015 Response to Office Action at 21), suggesting that “diamond”
    references may be to the tip. Overall, we do not find that the evidence demonstrates
    recognition of the diamond pattern as a source-indicator.


                                             - 17 -
Serial No. 86185623


             B.   Acquired Distinctiveness

       An ornamental design that lacks inherent distinctiveness may nonetheless be

    registered upon proof “sufficient to establish purchaser recognition of the … design

    as an indicia of origin for goods originating exclusively with applicant.” Anchor

    Hocking Glass Corp. v. Corning Glass Works, 

162 USPQ 288

, 292 (TTAB 1969) ); see

    also In re Owens-Corning Fiberglas Corp., 

774 F.2d 1116

, 

227 USPQ 417, 422

 (Fed.

    Cir. 1985) (approving USPTO practice of permitting registration of designs that

    appear principally to be ornamental upon proof of acquired distinctiveness). In order

    to obtain a registration under the provisions of Section 2(f) of the Trademark Act,

    Applicant bears the burden of demonstrating that its mark has acquired

    distinctiveness. See In re La. Fish Fry Prods., Ltd., 

797 F.3d 1332

, 

116 USPQ2d 1262, 1264

 (Fed. Cir. 2015). “The kind and amount of evidence necessary to establish that

    a mark has acquired distinctiveness in relation to goods or services depends on the

    nature of the mark and the circumstances surrounding the use of the mark in each

    case.” In re Chevron Intellectual Prop. Group LLC, 

96 USPQ2d 2026

, 2030 (TTAB

    2010).

       Applicant relies on the following in support of its claim of acquired distinctiveness:

       •     A declaration by Applicant’s general counsel, Mr. James W. Denison,
             authenticating a still frame from a YouTube video review of Applicant’s e-
             hookah, alleging that “the unsolicited reviewer held up the product and said,
             ‘This is how it looks like…. See those little diamond patterns….” The
             declaration further alleges that this YouTube video review displayed an
             indication that it had more than 3,000 hits.13


    13 February 5, 2015 Response to Office Action at 2-3, 6. In its Response, Applicant also offered

    to submit the actual video by mail, because of an apparently mistaken belief that “the TEAS
    system did not permit attachment of video files” (4 TTABVUE 20). However, the Examining


                                                 - 18 -
Serial No. 86185623



       •   Internet advertisements showing photos of the goods and identifying
           Applicant’s goods as “Fantasia Diamond E-Hookahs” or “Fantasia Diamond
           Series E-Hookahs,” also attached to Mr. Denison’s declaration.14

       •   Other Internet advertisements showing Applicant’s goods allegedly identified
           by a “Google search for Fantasia ‘Diamond’ electronic hookahs,” also attached
           to Mr. Denison’s declaration.”15 One such advertisement states that the device
           has a “Diamond tip with LED light on end.”16

       •   An e-Bay listing in which, according to Mr. Denison’s declaration, “the seller
           presented electronic hookah products resembling [Applicant’s], complete with
           a copy of the diamond trade dress that is the subject of this application,” and
           an advertisement wherein the same seller presents its products as Applicant’s
           and with the diamond pattern on the e-hookah, when, according to Mr.
           Denison’s declaration, the goods are not Applicant’s.17




    Attorney did not reply to this offer or advise Applicant how to submit the video. Since August
    2014, multimedia evidence, including video files under 30 MB, may be attached to the TEAS
    Response to Office Action form. The Examining Attorney notes her objection to any
    consideration of the video itself, which is not included in the record, but Applicant makes
    clear in its brief that it only seeks consideration of the still frame and accompanying
    information about the video provided in Mr. Denison’s declaration. Under the circumstances,
    we consider the still frame from the video and Mr. Denison’s declaration describing a certain
    portion of the YouTube video, both of which were included in the record, but we cannot
    consider the video itself, which we do not have. Cf. In re Planalytics, 

70 USPQ2d 1453

, 1458
    (TTAB 2004) (providing a link to a website does not suffice to put information in the record
    because of the transitory nature of the information available through the link).
    14 

Id. at 4, 7-18

 (www.southsmoke.com/pd-fantasia-diamond-e-hookah.cfm,

    www.hookahcompany.com/hookahblog/fantasia-e-hookah-best-electronic-hookah-pen,
    www.vapingcricket.com/p-15262-fantasia-diamond-e-hookah-pen.html,
    www.ebay.com/itm/E-Hookah-Fantasia-Diamond-Series-Disposable-electronic-hookah-pen-
    800-puffs-/301309855153?pt=LH_DefaultDomain_0&hash=item46277785b1.
    15 

Id. at 4, 19-33

 (www.5starhookah.com/Fantasia-Diamond-E-Hookah-FDEH.htm;

    www.citypuffs.com/products/fantasia-diamond-series-e-hookah-joker;
    radhookahpipes.com/fantasia-diamond-disposable-hookah-pen/;
    www.usawglasspipes.com/index.php?route=product/category&path=68; www.hookah-
    plus.com/categories.php.
    16 

Id. at 21

 (www.citypuffs.com).

    17 

Id. at 4, 34-35

 (www.ebay.com), 36-38 (www.dhgate.com).




                                                - 19 -
Serial No. 86185623


    Applicant characterizes its third-party promotional evidence as showing that

    consumers identify its products by the diamond pattern. In addition, Applicant

    argues that the competitor copying of the diamond design should be considered

    especially compelling proof that the proposed mark is recognized as source-

    identifying.

         The Examining Attorney counters that the evidence fails to establish that

    consumers perceive the diamond pattern as a source indicator. She points to the

    relatively brief use of the mark since 2012 and the lack of advertising evidence as

    weighing against acquired distinctiveness. Also, she argues that the third-party

    webpages submitted by Applicant describe the e-hookahs, but give no indication that

    “the diamond design has achieved any recognition as being a distinctive feature that

    indicates source.”18 After reviewing and summarizing the content of each set of

    webpages in her brief, the Examining Attorney notes that none mention the diamond

    pattern “as a feature of the goods or a way to determine that applicant is the source

    of the goods.”19 Turning to the alleged third-party copying, the Examining Attorney

    contends that “evidence of intentional copying is not probative of acquired

    distinctiveness in the product design context,”20 and she points out that the alleged

    copies are identified as “Diamond tip Fantasia E Hookah” and thus do not support



    18 6 TTABVUE 7.

    19 

Id. at 8

.

    20 

Id. at 9

. However, we note that neither the Examining Attorney nor Applicant treated the

    applied-for mark as product design, which cannot qualify as inherently distinctive as a
    matter of law. Wal-Mart Stores, Inc. v. Samara Bros., 

529 U.S. 205, 212-213

, 

54 USPQ2d 1065

, 1068-1069 (2000).


                                              - 20 -
Serial No. 86185623


    Applicant’s argument that the diamond pattern is the distinctive feature of its

    goods.21 Finally, as to the screen capture and declaration quoting the YouTube review

    video, the Examining Attorney criticizes the incompleteness of Applicant’s selected

    quotation, and notes that it merely reflects a consumer “describing a part of the

    appearance of the goods,” rather than any source indication.22

        We agree that, considered in its entirety, the evidence of acquired distinctiveness

    falls short of meeting Applicant’s burden. First, while the screen capture from the

    YouTube review of Applicant’s product and accompanying declaration evidence show

    that the reviewer noticed the diamond pattern, there is nothing to indicate that it is

    perceived as source-identifying. One may notice and comment on ornamentation

    without viewing it as source-identifying. The screen capture indicates that the video

    has a run time of over two minutes, but the declaration transcribes only one partial

    sentence from the video. While the record does not contain the video itself or a

    transcript of the entire video, we assume that Applicant submitted the screen shot

    and transcription excerpt it considers most persuasive to show distinctiveness. Cf. In

    re Federated Dep’t Stores, Inc., 

3 USPQ2d 1541

, 1542 (TTAB 1987) (where the




    21 Presumably because of her reference to the “single” instance of copying, Applicant lodged

    an objection that the Examining Attorney’s argument that the copying evidence is
    insufficient should be deemed waived, as not having been raised during examination.
    8 TTABVUE 8. While the Examining Attorney did not specifically address the copying in her
    final Office Action of February 26, 2015, she nonetheless stated that “the evidence and
    arguments provided are not sufficient to support the claim” of acquired distinctiveness.
    Therefore, we overrule the objection because the Office Action placed Applicant on notice
    regarding the Examining Attorney’s position regarding the insufficiency of the Section 2(f)
    evidence and preserved such arguments.
    22 6 TTABVUE 11.




                                               - 21 -
Serial No. 86185623


    Examining Attorney submitted only three of 18 articles retrieved from a database,

    the Board “assume[d] that the three excerpts selected provide the best support of the

    Examining Attorney’s refusal to register available from that source”). Even the

    excerpted partial sentence merely points out “those little diamond patterns,” without

    any further indication of their significance. We cannot ascertain the impact that this

    one mention within a two-minute video would have on consumers. Further, the

    number of viewings indicated, 3,000, is not large, and we have no context that

    indicates otherwise, such as a comparison to the overall number of purchasers of

    electronic hookahs. We also note in this regard that the number of viewings does not

    necessarily reflect unique viewers, rather than some individuals repeatedly watching

    the video. Overall, this evidence has minimal probative value as to acquired

    distinctiveness.

        Turning to the Internet advertisements referred to as Exhibits 2 and 3 in Mr.

    Denison’s declaration, we agree with the Examining Attorney that while these

    materials may use the word “Diamond” in reference to Applicant’s electronic hookahs,

    they do not appear necessarily to refer to the applied-for diamond pattern. All of the

    references are to the “Fantasia Diamond E-Hookah [or E Hookah or hookah]” or the

    “Diamond Series.” Also, as noted above, one advertisement indicates that “Diamond”

    refers to the diamond tip of the electronic hookah.23 In addition, while the materials

    typically contain pictures of the goods, they do not feature any “look for” advertising,

    nor do they in any way highlight or tout the significance of the diamond pattern. See


    23 February 5, 2015 Response to Office Action at 21.




                                               - 22 -
Serial No. 86185623


    In re ic! berlin brillen GmbH, 

85 USPQ2d 2021

, 2023 (TTAB 2008) (“While the

    earpiece design is visible on the eyewear shown in applicant’s print advertisements

    and Internet web pages, and in the celebrity photographs of record, there is nothing

    to indicate that the ultimate purchasers would view this particular feature as

    anything more than a component of the eyeglass/sunglass frame”); Duramax Marine,

    LLC v. R.W. Fernstrum & Co., 

80 USPQ2d 1780

, 1796-97 (TTAB 2006) (“While the

    image of applicant’s keel cooler is widely used, there is little evidence of ‘look for’

    advertising or actual promotion of the logo”); In re Edward Ski Prods. Inc.,

    

49 USPQ2d 2001

, 2005 (TTAB 1999) (“While the product design may be shown on

    each and every advertisement, there is no indication that potential purchasers would

    view this as more than a picture of the goods”).24

        The Internet materials also reveal some facts that detract from the claim of

    acquired distinctiveness. For example, they show that when Applicant’s e-hookahs

    are sold in boxes, the transparent window in the box does not even reveal the applied-

    for diamond pattern. That portion of the e-hookah is covered by the opaque part of

    the box and cannot be seen by consumers. In general, this evidence reflects that

    Applicant’s repeating diamond pattern does not create a distinct commercial

    impression apart from the other wording and designs appearing on the electronic

    hookahs. In addition, as noted above, the color scheme of the diamond pattern




    24 For examples of effective “look for” advertising, see, e.g., In re Owens-Corning Fiberglas

    Corp., 

774 F.2d 1116

, 

227 USPQ 417, 423-24

 (Fed. Cir. 1985); In re Data Packaging Corp.,
    

453 F.2d 1300

, 

172 USPQ 396, 398-99

 (CCPA 1972); In re Hehr Mfg. Co., 

279 F.2d 526

, 

126 USPQ 381

 (CCPA 1960).


                                               - 23 -
Serial No. 86185623


    changes to coordinate with the wording and design signifying the flavor of each

    electronic hookah. The color scheme and proximity of the pattern to the design and

    flavor name cause the diamond pattern to blend with these other elements of the

    trade dress, rather than making its own separable commercial impression as a source

    identifier. Overall, the advertisements do not weigh in favor of acquired

    distinctiveness. See In re McIlhenny Co., 

278 F.2d 953

, 

126 USPQ 138

, 140-41 (CCPA

    1960) (promotion of a bottle design bearing other trademarks insufficient under

    Section 2(f) to show that the public views the bottle design alone as a trademark);

    Soccer Sport Supply, 

184 USPQ at 348

 (advertising of a design along with word marks

    lacked the “nexus” that would tie together use of the design and the public’s

    perception of the design as an indicator of source); see also In re Pingel Enter. Inc.,

    

46 USPQ2d 1811

, 1823 (TTAB 1998) (discounting advertisements that merely

    showed “pictures of applicant’s product” because “People do not ascribe trademark

    significance to everything [to which] they are exposed”).

         Finally, with respect to the third-party copying, because it was not limited to the

    diamond design, we cannot conclude that it demonstrates the source-indicating

    nature of the diamond pattern. The third-party copying evidence shows an eBay

    listing entitled “E Hookah Fantasia Diamond Series Disposable electronic hookah

    pen HS.”25 The additional webpage promoting the same goods also uses “Fantasia E

    Hookah.”26 Thus, in both instances, source-identifying wording appears along with



    25 February 5, 2015 Response to Office Action at 34.

    26 

Id. at 36

.




                                               - 24 -
Serial No. 86185623


    the depiction of the goods having a trade dress generally similar to Applicant’s, with

    a variety of features including the repeating diamond pattern. Because the copying

    in this instance is not limited to the diamond pattern alone, it does not show that the

    copier perceived the diamond pattern by itself as a source indicator or believed that

    consumers would rely on the diamond pattern as an indicator of the source of the

    goods. We cannot discern the copyist’s motivation to include the diamond pattern

    among the various features of Applicant’s trade dress and use of the “Fantasia” brand

    name, and we therefore cannot find that the copying suggests that the diamond

    pattern, by itself, serves as a mark.

        In view of the foregoing, we agree with the Examining Attorney’s determination

    that Applicant’s evidence, viewed separately and as a whole, failed to establish the

    requisite showing under Section 2(f) that its repeating pattern mark is recognized by

    consumers as a trademark.

       Decision: We affirm the refusal to register under Sections 1, 2 and 45 of the

    Trademark Act on the ground that Applicant’s proposed mark fails to function as a

    trademark because it is a non-distinctive, merely ornamental pattern that has not

    acquired distinctiveness under Section 2(f).




                                            - 25 -