In a recent non-precedential opinion, the TTAB affirmed a refusal to register Melissa & Doug, LLC’s red oval background mark (the “Proposed Mark”), finding that the acquired distinctiveness factors weighed against a finding of distinctiveness:

Melissa & Doug

Melissa & Doug is a beloved American brand of children’s toys, including wooden puzzles, arts and crafts products, and other educational toys, and the oval at issue has appeared on such products since 2003. The application at issue covered a long list of goods in Classes 16 and 28, and online retail store services in Class 35.

However, common geometric shapes that appear as a background for other wording are not regarded as trademarks on their own, absent evidence of distinctiveness for the background design alone. See In re Benneton Grp. S.p.A., 48 USPQ2d 1214 (TTAB 1998). Though Melissa & Doug provided the Examining Attorney and the Board with a large volume of evidence in support of registration of this mark, most, if not all, of the evidence pertained to use of the Proposed Mark as the background image for the words “Melissa & Doug.” The Board found the evidence to be largely unpersuasive, and ultimately found that the distinctiveness factors weighed against registration of the mark. The Board considered the following factors:

  1. Association of the Proposed Mark with a Particular Source by Actual Purchasers: Melissa & Doug obtained 31 customer declarations during one day stationed at the FAO Schwartz toy store in New York. The Board noted that these declarations were generally well done and persuasive, while also limited in quantity. This factor weighed in favor of Melissa & Doug.
  2. Length, Degree, and Exclusivity of Applicant’s Use: There was some evidence in connection with these factors that weighed in favor of Melissa & Doug, but the Board said that the fact that the design was always displayed behind the “Melissa & Doug” wording lessens the value of that evidence. This factor weighed slightly in favor of Melissa & Doug.
  3. Amount and Manner of Advertising: The Board noted that the Proposed Mark, displayed with the Melissa & Doug wording, appears prominently on Applicant’s products and point-of-sale displays. However, the Board also discussed that multiple other arguments made by the Applicant on this point were unpersuasive – specifically, that the “Melissa & Doug” wording was not always used with the mark, and that the Applicant had engaged in robust social media advertising. On balance, this factor weighed against Melissa & Doug.
  4. Amount of Sales and Number of Customers: Though Melissa & Doug’s sales figures were characterized as “substantial” and “impressive,” the Board mostly dismissed this evidence, as the Proposed Mark is always used in connection with the “Melissa & Doug” wording. This factor weighed against Melissa & Doug.
  5. Intentional Copying: Melissa & Doug submitted evidence that a foreign company copied its “Water WOW” coloring books and used the Proposed Mark on the counterfeit products. However, because the foreign company also copied other trade dress elements of Melissa & Doug’s coloring books, the Board was reluctant to attribute consumer confusion solely to the use of the Proposed Mark. This factor weighed against Melissa & Doug.

Unfortunately, due to the nature of this mark, Melissa & Doug was always going to have an uphill battle to registration. The main takeaway from this case is that brand owners keen to acquire rights in marks comprised solely of background designs, especially those made of simple geometric shapes, should consider also using the mark alone, independent of any word marks, to enhance the trademark significance and recognition of the design per se. If Melissa & Doug had also used the red oval independently, this case may have had a different outcome. And, as is always the case with trademarks, Melissa & Doug could take steps now to enhance the source-identifying significance of the red oval per se, which may improve its chances of registering this mark in the future. Particularly in the anti-counterfeiting space, it is advantageous to own an arsenal of registrations for different mark variations for use in different enforcement contexts.

This article appeared in the January 2021 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.