James T. Maher

Trademark Trial and Appeal Board

Jul 23, 2003

No. 75934176 (T.T.A.B. Jul. 23, 2003)

Mailed: 23 JUL 2003
Paper No. 11
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re James T. Maher
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Serial No. 75/934,176
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Bradley B. Heisler of Heisler & Associates for James T.
Maher.
Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 109 (Leslie Bishop, Managing Attorney).
_______
Before Hairston, Bottorff and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 2, 2000, James T. Maher (applicant) applied
to register the mark RAK RANDOM ACTS OF KINDNESS (typed) on
the Principal Register for “shirts’ in International Class
25. The application contained an allegation of a date of
first use of April 13, 1999, and a date of first use in
commerce of May 5, 1999.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 75/934,176
2
The examining attorney refused to register applicant’s
mark on the ground that the mark is used on the goods as
ornamentation and it, therefore, does not function as a
mark under the provisions of Sections 1, 2, and 45 of the
Trademark Act. 15 U.S.C. §§ 1051, 1052, and 1127. The
examining attorney maintains that applicant’s mark is a
slogan “Random Acts of Kindness” with the letters “RAK” and
that “[s]logans or phrases used on items such as t-shirts
and sweatshirts, jewelry, and ceramic plates have been
refused registration as ornamentation that purchasers will
perceive as conveying a message rather than indicating
source of the goods.” Brief at 2-3. The examining
attorney held that the mark is only ornamentation and that
there is no evidence that applicant’s mark serves a source-
identifying function.
In response, applicant asserts that the “mark’s
overall commercial impression is that of a trademark” and
that the specimens of record closely match examples of
matter functioning as a trademark. Brief at 3. Applicant
also maintains that the term RAK is very significant.
“‘RAK’ is an acronym coined by the applicant standing for
‘Random Acts of Kindness…’ As such a coined acronym, the
‘Rak’ portion of the overall mark ‘RAK RANDOM ACTS OF
Ser No. 75/934,176
3
KINDNESS’ makes the mark more arbitrary in nature.” Brief
at 6.
After the examining attorney made the refusal final,
this appeal followed.
The mere fact that a term appears on a product does
not make it a trademark. In re Pro-Line Corp., 28 USPQ2d
1141, 1142 (TTAB 1993). Informational messages and slogans
devoid of trademark significance are not inherently
distinctive. Id. However, “[m]atter 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.”
In re Dimitri's Inc., 9 USPQ2d 1666, 1667 (TTAB 1988).
“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.” Pro-Line, 28 USPQ2d at 1142.
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the manner
in which an applicant has employed the asserted mark,
as evidenced by the specimens of record, must be
carefully considered in determining whether the
asserted mark has been used as a trademark with
respect to the goods named in the application.
Ser No. 75/934,176
4
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216
(CCPA 1976) (emphasis in original, footnote omitted).
A specimen showing three photographs of the fronts of
applicant's shirts is set out below.
Ser No. 75/934,176
5
The photographs show that the words are prominently
featured as ornamentation on the front of applicant’s
shirts in either the center or the left corner. The term
RAK is always shown in larger type than the other words,
“Random Acts of Kindness.” After viewing the specimens, we
cannot agree with applicant that its mark creates the
commercial impression of a trademark. The mark is
displayed on the front of the shirts in a manner that
“immediately catches the eye.” Pro-Line, 28 USPQ2d at
1142. The size, location, and dominance of applicant’s
mark on the shirts supports the conclusion that the mark
would serve an ornamental rather than a source-identifying
function on the goods.
In addition, the words in the mark itself do not
indicate that they would have anything other than an
ornamental significance. Certainly the common words,
“random acts of kindness” would not be inherently
distinctive when applied to shirts as applicant has done.
It is a phrase akin to the non-distinctive phrases
discussed in In re Olin Corp., 181 USPQ 182 (TTAB 1973)
(“Swallow Your Leader”) and in Damn I’m Good Inc. v.
Sakowitz, 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981)
(“Damn I’m Good”). The only unusual feature of applicant’s
mark is the fact that it includes the term “RAK.” Standing
Ser No. 75/934,176
6
alone, “RAK” may not appear to have any meaning, however,
the next part of applicant’s mark answers any questions
that prospective purchasers may have concerning the meaning
of this term. The mark immediately defines the term as an
acronym for the non-distinctive words “random acts of
kindness.” Applicant admits that “RAK” is “an acronym
coined by applicant standing for ‘Random Acts of Kindness,”
(Brief at 6) and customers would clearly understand the
term to have this meaning. When consumers view the mark as
used on the specimens, the mark is not arbitrary. Instead,
it would be viewed as an informational message or a slogan
devoid of trademark significance. Pro-Line, 28 USPQ2d at
1142.
In addition, applicant also admits that other slogans
appear on the back of applicant’s shirts, such as “It’s
good for the soul” and “Give a little, get a lot.” Brief
at 5. This fact makes it even less likely that potential
customers will sort through the slogans on the front and
back of applicant’s shirts and ascribe trademark functions
to some and ornamental or decorative functions to others.1

1 We note that applicant does not use the TM symbol after its
mark, although it does use the TM symbol after the word RAK.
This is some evidence that potential customers will not
recognized the actual mark for which that applicant is currently
seeking registration as a trademark. In re Wakefern Food Corp.,
222 USPQ 76, 78-79 (TTAB 1984)(“The fact that no symbol, such as
‘TM’ or ‘SM,’ is used to designate an alleged mark is also some
Ser No. 75/934,176
7
Rather, prospective purchasers will see that applicant’s
shirts contain various messages or other non-distinctive
phrases.
We also observe that the record is devoid of any
evidence that consumers recognized that applicant’s mark
has a source-identifying function. There is no evidence to
suggest that applicant’s term identifies a secondary source
in addition to being ornamental. Our case law recognizes
that 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.” In re Paramount Pictures Corp., 213 USPQ
1111, 1112 (TTAB 1982). In that case, the Board found that
the “primary significance of the words “MORK & MINDY” to
any prospective purchaser of a decal such as the one here
involved is to indicate the television series.” Id.
(emphasis in original). The Board went on to discuss that

evidence that the phrase is not being used in a trademark or
service mark sense”). See also In re Astro-Gods Inc., 223 USPQ
621, 624 (TTAB 1984) (Use of copyright notice with ornamentation
not enough to make an association between the designation and
applicant’s name).
Ser No. 75/934,176
8
arbitrary terms such as KODAK and DREFT have obvious
source-indicating characteristics because they “usually
have no other perceived significance.” Id. In this case,
there is no evidence that RAK would be recognized in a
similar manner as MORK & MINDY, DREFT, or KODAK. Second,
as we indicated earlier, the mark itself defines the term
RAK in such a way that prospective purchasers would simply
associate RAK with the non-distinctive phrase “Random Acts
of Kindness” rather that as an arbitrary term.
In conclusion, it is our view that the words sought to
be registered are primarily an ornamental feature of the
goods and, therefore, they do not function as a trademark
for the goods.2
Decision: The refusal to register is affirmed.

2 Applicant has not sought registration under the provisions of
Section 2(f) of the Trademark Act.