Banana Republic (Apparel), LLC

Trademark Trial and Appeal Board

May 23, 2007

No. 78485048 (T.T.A.B. May. 23, 2007)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: May 23, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Banana Republic (Apparel), LLC
________

Serial No. 78485048
_______

Julie Gruber of GPS Services, Inc. for Banana Republic
(Apparel), LLC.

Leigh A. Lowry, Trademark Examining Attorney, Law Office
104 (Chris Donninger, Managing Attorney).
_______

Before Seeherman, Drost, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Banana Republic (Apparel), LLC filed an intent-to-use
application for the tortoise shell design shown below for
the following goods and services, as amended:1
Magnetic encoded cards and cards containing an
integrated circuit chip, namely, smart cards
containing programming used to purchase merchandise
and services, in Class 9;

Administration of loyalty card incentive program to
promote retail store services featuring apparel and
fashion accessories, in Class 35; and,

Credit card services, in Class 36.

1 Application Serial No. 78485048, filed September 16, 2004.
Serial No. 78485048
2

The mark sought to be registered is “a credit card face
with a translucent background consisting of the mottled
colors orange, black and brown that represent a tortoise
shell pattern.”
During the prosecution of the application, applicant
filed an amendment to allege use claiming October 11, 2004
as both the dates of first use anywhere and the first use
in commerce for all three classes of goods and services.
The specimen of use shown below is the same for all the
classes of goods and services.2

2 Although it is somewhat difficult to see in the reproduction
in this opinion, a credit card featuring the tortoise shell
design is presented in the middle of the right side of the
advertisement.
Serial No. 78485048
3
Registration has been refused for two reasons:
1. The subject matter sought to be registered is
merely ornamental and it does not function as a
trademark (i.e., the ornamentation refusal).
Registration was therefore refused under Sections
1, 2, 3, and 45 of the Lanham Act, 15 U.S.C. §§
1051, 1052, 1053, and 1127;3 and,

2. The specimen of use does not support the use of
the tortoise shell design for the “administration
of loyalty card incentive program to promote
retail store services featuring apparel and
fashion accessories,” in Class 35.

The examining attorney contends that the tortoise
shell design does not function as a trademark because it is
a non-distinctive background design. To support the
refusal, the examining attorney submitted web page

3 The examining attorney did not assert that applicant’s tortoise
shell design is a product design and that as such it could never
be inherently distinctive, and this issue was not briefed. Wal-
Mart Stores, Inc. v. Samara Brothers Inc., 529 U.S. 205, 54
UPSQ2d 1065, 1069 (2000). Thus, we have not addressed this
issue. In any event, as part of our determination that
applicant’s mark is ornamental, we have found that the proposed
mark is not inherently distinctive.

In addition, we note that the examining attorney never raised the
question as to whether applicant’s magnetic encoded cards and
smart cards, in Class 9, are goods in trade, rather than simply a
conduit through which applicant renders its loyalty card
incentive award program services and credit card services.
Accordingly, for purposes of rendering our decision herein, we
have accepted that the magnetic encoded cards and smart cards are
bona fide goods in trade in our analysis of the registrability of
the mark. Cf. Ex parte Bank of America National Trust and Savings
Association, 118 USPQ 165 (Comm’r Pats. 1958)(mark not
registrable for passbooks, checks, and other printed forms, where
forms are used only as necessary tools in the performance of
banking services, and the applicant is not engaged in printing or
selling forms as commodities in trade); INB National Bank v.
Metrohost Inc., 22 USPQ2d 1585, 1587 n.3 (TTAB 1992).

Serial No. 78485048
4
printouts from credit card companies offering consumers the
opportunity to select background designs for their own
credit cards.4
With respect to the specimen refusal, the examining
attorney argues that although the specimens associate the
proposed mark with a loyalty award program per se, they do
not show use of the proposed mark in connection with a
loyalty award program used to promote retail store
services.
In response to the specimen refusal, applicant
submitted a brochure/pamphlet showing use of the tortoise
shell design in connection with the administration of a
loyalty program.5 Representative pages from the substitute
specimen are shown below:

4 The examining attorney submitted web pages from CapitalOne,
FirstUSA, MBNA, First National Bank of Omaha, Discover Card, and
AIMS Advantage American Express credit cards. The web pages
displayed credit cards with different background designs.

5 The use of the brochure/pamphlet as of the filing date of the
amendment to allege use was not supported by a declaration or
affidavit. Therefore, although it can be used as further
evidence of how the proposed mark is perceived, it is not
acceptable as a specimen.
Serial No. 78485048
5

With respect to the ornamentation refusal, applicant
argues that its proposed mark is not merely ornamental, and
that “It primarily functions as an indication of source.”
(Applicant’s Brief, p. 4). Applicant contends that through
extensive promotion, such as direct mailings, invitations
to store events, and coupons, it has drawn attention to the
tortoise shell design as a trademark. Attached below are
representative samples of those materials.

Serial No. 78485048
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Serial No. 78485048
7

Serial No. 78485048
8
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs. We
affirm the ornamentation refusal and reverse the specimen
refusal.

A. Ornamentation Refusal
A decorative design may be both ornamental and a
trademark when the design serves to advise the purchaser
that the products or services identified by the design
emanate from a single source. In re E. J. Brach & Sons,
256 F.2d 325, 118 USPQ 308, 309 (CCPA 1958)(if a design is
inherently distinctive, and not mere background material,
it may be registered without evidence of secondary
meaning). See In re Paramount Pictures Corp., 213 USPQ
1111, 1113 (TTAB 1982). Whether a design is merely
ornamental or functions as a trademark is a matter of
public perception. 1 McCarthy On Trademarks and Unfair
Competition §7:24 (4th ed. 2006)(“If customers perceive a
design only as pleasing ornamentation, then the design is
not a trademark. If customers perceive a design as not
only attractive, but as an indicator of source, then it is
a trademark”). See also, Tone Brothers Inc. v. Sysco
Corp., 28 F.3d 1192, 31 USPQ2d 1321, 1331 (Fed. Cir.
1994)(“Thus, the focus of the inquiry is whether or not the
Serial No. 78485048
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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”).
We believe that applicant’s tortoise shell design is
not inherently distinctive. We agree with the examining
attorney that the tortoise shell design “serves only to
enhance how the magnetically encoded cards and smart cards
look, not to indicate source. Because consumers and the
purchasing public can readily acquire such cards in a
variety of background designs, consumers will not associate
any particular source with a single background design.”
(Examining Attorney’s Brief, unnumbered page 6). In
reaching this conclusion, we note that the proper test for
determining whether the tortoise shell design is inherently
distinctive involves consideration of such factors as
whether the design is (i) a common basic shape or design;
(ii) unique or unusual in the field; (iii) a mere
refinement of a commonly-adopted and well-known form of
ornamentation for particular goods or services viewed
simply as decoration for the goods and services; or (iv)
capable of creating a commercial impression distinct from
the accompanying words. Seabrook Foods, Inc. v. Bar-Well
Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291 (CCPA 1977).
Serial No. 78485048
10
See also, In re File, 48 USPQ2d 1363, 1365 (TTAB
1998)(tubular lights running lengthwise down a bowling
alley lane are merely decorative interior lighting and
would not be perceived as a trademark); In re F.C.F. Inc.,
30 USPQ2d 1825, 1827 (TTAB 1994)(rose design packaging for
cosmetics not inherently distinctive because it is simply a
refinement of a basic, common, and well-known form of
decoration or ornamentation for cosmetic packaging).
The record shows that a number of credit card issuers
permit card holders to select background designs for their
credit cards, and that background designs are varied and
commonplace. The designs include, but are not limited to,
animals, personal photographs and scenery, as well as
geometric shapes such as angles, curves, and swirls.6 Thus,
it is neither unique nor unusual for credit cards to
feature ornamental background designs.
Applicant’s tortoise shell design covers the entire
card just like the designs displayed on the third-party
credit cards. As so used, purchasers and prospective
purchasers are not likely to regard the tortoise shell
design as identifying and distinguishing applicant’s goods

6 We note that in the web page featuring the AIMS Advantage
American Express credit cards attached to the July 27, 2006
Trademark Office Action, one of the credit cards features a
“marbling” design that is somewhat similar to applicant’s
tortoise shell design.
Serial No. 78485048
11
and services. In re F.C.F. Inc., supra; In re Soccer Sport
Supply Co., Inc., 507 F.2d 1400, 184 USPQ 345, 347 (CCPA
1975)(pentagon-shaped repetitive design applied to the
entire surface of a soccer ball is not inherently
distinctive). Moreover, because the use of background
designs on credit cards appears to be widespread, and
because the tortoise shell design is clearly decorative in
nature, the public will perceive the tortoise shell design
as a version or a refinement of a commonly used form of
decoration for credit cards, not as a trademark.
Applicant argues that it has “strongly encouraged
buyers to view the tortoise shell design as a source
indicator by inundating customers with direct mailings,
invitations to store events, coupons and other materials
featuring the TORTOISE SHELL Design.” (Applicant’s Brief,
p. 4). However, the tortoise shell design does not create
a distinct commercial impression separate and apart from
any writing that appears on the cards, and there is no
evidence that applicant ever promoted or drew attention to
the tortoise shell design so as to encourage consumers to
view it as a trademark. See In re Villeroy & Boch
S.A.R.L., 5 USPQ2d 1451, 1454 (TTAB 1987).
Finally, applicant argues that its tortoise shell
design is different from the third-party background designs
Serial No. 78485048
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because applicant is the only credit card issuer that uses
a tortoise shell design and because applicant’s customers
do not have a choice of backgrounds. Therefore, while
applicant accepts that third-party credit card backgrounds
are decorative because they represent the personal
preference of users, applicant contends that its unique,
mandatory, tortoise shell design identifies a single
source. (Applicant’s Brief, pp. 5-6).
The circumstances of applicant being the “one and
only” user of a tortoise shell design for its goods and
services is not the test for determining whether a mark is
inherently distinctive.
If the concept of inherent
distinctiveness was defined as meaning
simply “one and only,” then one could
obtain a registration for a design
which, while “unique” in this sense,
differed only slightly from the designs
of other competing products and/or
containers. There would be no need
that the applied for design have an
“original, distinctive and peculiar
appearance”.

In re E S Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992),
citing In re McIlhenny Co., 278 F.2d 953, 126 USPQ 138, 140
(CCPA 1960) and Ex parte Haig & Haig, Ltd., 118 USPQ 229,
230 (Ass’t Comm’r 1958). See also, In re File, supra. In
this case, not only is there no evidence that the tortoise
shell background design has ever been promoted as a
Serial No. 78485048
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trademark or service mark, but the evidence of record
demonstrates that many credit card companies issue credit
cards with decorative backgrounds. Therefore, applicant’s
use of a background design on its cards is not unique or
unusual in the field, it is simply a refinement of an
already existing practice.
We also note that this case presents a somewhat
unusual situation because the ornamentation is being used
in connection with services in addition to goods, and
services normally cannot be “ornamented” because they are
not tangible items. However, the mark at issue is the
tortoise shell design on the face of a credit card/loyalty
card, and the card is the means by which customers access
applicant’s services. Thus, the card is the physical
embodiment of the services. Because, as previously
discussed, the tortoise shell design on the credit cards
does not function as a service mark because it is simply a
decorative design, it will not be perceived as a mark for
the identified services.
On the basis of the record before us, we conclude that
applicant’s tortoise shell design is not inherently
distinctive and does not function as a trademark or service
mark because (i) it is not unique or unusual in the field;
Serial No. 78485048
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(ii) it is a mere refinement of the common practice of
using background designs on credit cards; and, (iii) it
does not create a commercial impression distinct from the
written matter that appears on the cards.

B. The Specimen Refusal
The original specimen of record noted above is an
advertisement appearing in a catalog promoting applicant’s
“Luxe” card. It features a photograph of the card
displaying the tortoise shell design. The text
accompanying the advertisement reads as follows, so far as
pertinent:
THE BANANA REPUBLIC
LUXE CARD

In addition to the holiday offer,
Luxe cardmembers are invited to
take advantage of these exclusive
benefits, each designed to make
the holidays merrier.

* * * *

ONE CARD. THREE STORES.
Shop with the Luxe card at Gap
and Old Navy. Earn and redeem
rewards at all three stores and
online, too.

Contrary to the examining attorney’s arguments, the
original specimen of record clearly shows the proposed mark
used in association with a loyalty card incentive program
Serial No. 78485048
15
to promote retail store services. The advertisement states
that the user may use the Luxe card at Banana Republic,
Gap, and Old Navy stores to earn and redeem rewards. In
view of the foregoing, the refusal to register the proposed
mark in connection with the Class 35 services is reversed.
Decision: The refusal to register the proposed mark
for the services in Class 35 on the ground that the
specimen of record does not show use of the mark in
connection with those services is reversed.
The refusal to register the tortoise shell design in
Classes 9, 35, and 36 on the ground that the proposed mark
does not function as a trademark pursuant to Sections 1, 2,
3 and 45 of the Lanham Act is affirmed.