Fenwick & West LLP

On March 18, 2021, Nike filed a cancellation action at the Trademark and Trial Appeal Board against Vans’ recently granted registration on the Supplemental Register for a checkerboard pattern that goes down the sleeve of shirts, sweaters, jackets and coats. Nike argues that the registration should be cancelled because a checkerboard pattern is merely ornamental or decorative and is incapable of acting as a source identifier, and that Nike, along with numerous other brands, uses checkerboard patterns on apparel.

Vans’ application for a checkerboard pattern on the Principal Register was rejected by the examiner because the pattern was “merely a decorative or ornamental feature of applicant’s clothing, and, thus, does not function as a trademark to indicate the source of applicant’s clothing.” After unsuccessfully arguing otherwise, Vans amended the application to the Supplemental Register. Unlike the Principal Register, the Supplemental Register is for descriptive marks that are “capable” of achieving trademark status when the mark has acquired distinctiveness, or, in other words, once enough people recognize the applied-for mark as a source identifier. While a registration on the Supplemental Register is without many of the benefits afforded to marks on the Principal Register, like the presumption of validity, it may be a good decision for Vans. It allows the company to bring an infringement suit, use the registered trademark symbol and, somewhat paradoxically, can be cited by an examining attorney against future applications on either register.

A guiding principle of federal trademark law is to protect consumers from deception and confusion by requiring marks to indicate the source of the products or services. If the proposed mark is “purely ornamental or decorative” the examiner must refuse the application on either register because it doesn’t function as a trademark. TMEP § 1202.03(a). Nike’s position that a common design element, such as a checkerboard pattern, is incapable of distinguishing goods and services of one company from another because consumers are so used to seeing the design used by numerous brands, appears in line with the TTAB’s earlier decisions and the policy underlying trademark law. Both Nike in its petition and the examiner in the multiple Office actions point to many other uses of checkerboard patterns on a variety of garments to show that such this design element can’t function as a source identifier to the general consumer.

If Vans’ registration stands, it is possible that the company will attempt to register the checkerboard pattern on more items (indeed, Vans has registrations and applications for the pattern on its own pants and socks, each of which Nike has also opposed). More concerning for brand owners is how Vans would use these registrations to prevent other uses of checkerboard patterns on apparel and what a decision might mean for protecting other designs.

If this cancellation action continues, it could be late 2022 before we see a decision from the TTAB about whether a checkerboard pattern is capable of functioning as a trademark.