## Facts

- Paramount Pictures Corporation applied to register “MORK & MINDY” for decals.
- The specimens showed “Mork & Mindy” in large, fluorescent multicolored lettering against a shaded background, superimposed over a photograph of the television characters.
- The examining attorney refused registration on the ground that, as used on the decals, the designation would be perceived as ornamental/decorative rather than source-identifying, and therefore did not function as a trademark under the Lanham Act.
- Paramount appealed the refusal to the Trademark Trial and Appeal Board (TTAB).

## Issues

1. Whether “MORK & MINDY,” as displayed prominently in a pictorial, attention-getting format on decals, functions as a trademark identifying source, or is merely ornamental matter.

## Decision

- The TTAB addressed the “failure to function” refusal by applying a consumer-perception inquiry to the mark as actually used on the goods.
- The TTAB articulated that attractive or prominent display does not automatically bar registrability; the controlling question is whether the matter primarily serves a source-identifying role rather than a decorative one.
- The TTAB explained that matter may be registrable when it is primarily source-indicating (inherently or through acquired distinctiveness) even if it has incidental ornamental features.

## Legal Principles

- Not every word, phrase, or design placed on goods functions as a trademark; registrability depends on whether consumers perceive it as identifying a single source.
- Matter that is merely decorative or ornamental does not identify and distinguish goods and therefore does not function as a trademark.
- Decorative display exists on a continuum; a visually prominent presentation may still function as a mark if, in context, the primary commercial impression is source identification.
- A showing of inherent distinctiveness or acquired distinctiveness can support registration where the display otherwise appears ornamental.
- Evidence that consumers recognize the designation as indicating a “secondary source” (based on prior or concurrent recognition of the designation as a mark for other goods or services) may support a finding that an ornamental-looking use nevertheless functions as a trademark.

## Conclusion

The TTAB’s decision is a leading statement of the “ornamentation versus trademark function” framework: prominent, decorative use on goods is not per se registrable or unregistrable; the outcome turns on whether consumers would view the matter, in context, as primarily identifying source, including through inherent/acquired distinctiveness or “secondary source” recognition.


In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (T.T.A.B. 1982)