## Facts

- Lululemon sought Principal Register protection for a thin, single-line wave design applied in large size across the front of certain garments (e.g., hooded sweatshirts, jackets, coats).
- The examining attorney viewed the design as a common decorative feature resembling piping or trim on apparel.
- Lululemon argued the design was inherently distinctive and that consumers would treat it as a source identifier rather than decoration.
- The USPTO refused registration under Lanham Act §§ 1, 2, and 45 as merely ornamental matter that did not function as a trademark.
- After a final refusal, Lululemon amended its filing bases to §§ 1(b) and 44(e) but did not assert acquired distinctiveness under § 2(f).
- Lululemon appealed the refusal to the Trademark Trial and Appeal Board, which issued a precedential decision.

## Issues

1. Whether a simple wave-line design displayed prominently across the front of apparel is inherently distinctive and functions as a trademark.
2. Whether the design is instead non-distinctive product design or ornamentation requiring proof of acquired distinctiveness for registration on the Principal Register.
3. Whether the record supported registration where the applicant did not claim acquired distinctiveness under Lanham Act § 2(f).

## Decision

- The TTAB affirmed the examining attorney’s refusal to register the design on the Principal Register.
- The Board found the wave design, as used on the garments, would likely be perceived as decorative piping/trim rather than an indicator of source.
- The Board treated the design as non-distinctive product design or ornamentation, not inherently distinctive trade dress.
- Because the applicant did not assert § 2(f) acquired distinctiveness and the record did not establish consumer recognition of the design as a mark for the identified goods, registration was denied.

## Legal Principles

- A trademark must function to identify and distinguish goods and indicate source; not all matter placed on a product functions as a trademark.
- Product design and common ornamental features are generally not inherently distinctive and ordinarily require acquired distinctiveness for Principal Register registration.
- The size or prominence of a design on clothing is relevant but does not by itself establish trademark significance; context and commercial impression control.
- When matter is found ornamental or product design, the applicant bears the burden to plead and prove acquired distinctiveness under Lanham Act § 2(f) to obtain Principal Register registration.
- Evidence that similar simple linear designs are commonly treated as non-distinctive (including third-party registrations obtained on the Supplemental Register or with § 2(f) claims) supports an ornamentation finding.

## Conclusion

The TTAB held that Lululemon’s large, simple wave-line design on the front of apparel would be seen as decoration rather than source identification, and, absent a § 2(f) claim and proof of acquired distinctiveness, the design was not registrable on the Principal Register.


In re Lululemon Athletica Canada Inc., 105 U.S.P.Q.2d 1684 (T.T.A.B. 2013)