City of Laconia, New Hampshire

OCR transcription for search; preserved printed pages are authoritative

This Opinion is Not a
Precedent of the TTAB

Mailed: May 28, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

In re City of Laconia, New Hampshire

Serial No. 98201363

Michael J. Persson of Chisholm Persson & Ball, PC for
City of Laconia, New Hampshire.

Bianca Allen, Trademark Examining Attorney, Law Office 128,
Susan Hayash, Managing Attorney.

Before Wellington, Greenbaum, and Bradley,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

The City of Laconia, New Hampshire (“Applicant”) seeks registration on the
Principal Register of the standard-character mark LACONIA MOTORCYCLE WEEK
for:

clothing headwraps; gloves as clothing; headwear for men, women and
children; jerseys being clothing; shirts for men, women and children;
sweatshirts for men, women and children; t-shirts for men, women and
children, in Class 25; and

Serial No. 98201363
- 2 -
cloth patches for clothing; belt buckles, not of precious metal, for clothing;
textile patches for clothing, in Class 26.1
Applicant has disclaimed LACONIA and MOTORCYCLE.2
The Examining Attorney refused registration under Sections 1, 2, and 45, of the
Trademark Act (“the Act”), 15 U.S.C. §§ 1051, 1052, 1127, on the ground that the
proposed mark, as used in the specimens of record, is merely an ornamental feature
of the identified goods in both classes and thus does not function as a trademark to
indicate the source of Applicant’s goods and to identify and distinguish them from
those of others. The Examining Attorney also rejected Applicant’s claim that the
proposed mark has acquired distinctiveness under Section 2(f) of the Act, 15 U.S.C.
§ 1052(f).
After the Examining Attorney issued a final refusal, Applicant appealed.
We affirm the refusal.
I. Failure to Function Refusal -- Applicable Law
Trademark Act Sections 1, 2, and 45 provide the statutory basis for refusal to
register subject matter that does not function as a trademark. 15 U.S.C. §§ 1051,
1052, 1127. Specifically, Section 1 of the Act sets forth requirements for requesting
registration of a trademark. See 15 U.S.C. § 1051. Section 2 of the Act provides for
1 Application Serial No. 98201363, filed on September 28, 2023, is based on Applicant’s
allegation of first use of the mark anywhere and in commerce on June 12, 2010, under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 Applicant voluntarily provided a disclaimer of MOTORCYCLE WEEK in its initial
application. In the first Office Action, the Examining Attorney required Applicant to amend
the application to insert “an additional disclaimer and deletion of the disclaimer of WEEK.”
See Office Action issued on May 28, 2024, at TSDR p. 8. Applicant then amended the
application to include the current disclaimer and comply with this requirement.

Serial No. 98201363
- 3 -
registration of, “trademark[s] by which the goods of the applicant may be
distinguished from the goods of others.” 15 U.S.C. § 1052. And Section 45 of the Act
defines a “trademark” in relevant part, as “any word, name, symbol, or device, or any
combination thereof . . . used by a person . . . to identify and distinguish his or her
goods, including a unique product, from those manufactured or sold by others, and to
indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127.
Accordingly, “‘[m]atter that does not operate to indicate the source or origin of the
identified goods . . . and distinguish them from those of others does not meet the
statutory definition of a trademark and may not be registered.’” In re Greenwood, No.
87168719, 2020 TTAB LEXIS 499, at *5 (quoting In re AC Webconnecting Holding
B.V., No. 85635277, 2020 TTAB LEXIS 428, at *8-9). Or, put simply, the USPTO “is
statutorily constrained to register matter on the Principal Register if and only if it
functions as a mark.” In re Brunetti, No. 88308426, 2022 TTAB LEXIS 297, at *14.
The failure to function statutory refusal is not unique to any one set of
circumstances and, indeed, “[t]here are many reasons a proposed mark may fail to
function.” In re The Ride, LLC, No. 86845550, 2020 TTAB LEXIS 2, at *18; see also
generally TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §§ 1202, 1202.01-
1202.19 (Nov. 2025). For instance, the refusal in this appeal is based on the
contention that the proposed mark will be perceived by the relevant consumers as
mere ornamentation for the goods it is applied to and thus does not serve to indicate
the source of the goods. See, e.g., In re Fantasia Distrib., Inc., No. 86185623, 2016
TTAB LEXIS 471, at *3.

Serial No. 98201363
- 4 -
As far as making a determination from the perspective of the relevant consumers,
we find these are all potential purchasers of the various articles of clothing, cloth and
textile patches for clothing, and belt buckles identified in the application. In re Team
Jesus LLC, No. 88105154, 2020 TTAB LEXIS 503, at *6 (“In this case, because there
are no limitations to the channels of trade or classes of consumers, the relevant
consuming public comprises all potential purchasers of the identified goods and
services.”).
II. How Will Consumers Perceive Applicant’s Proposed Mark As
Displayed in the Specimens?
In making our determination as to whether Applicant’s proposed mark will be
perceived by the relevant consumers as a source identifier or not, “we look to the
specimens and other evidence of record showing how the designation is actually used
in the marketplace.” In re Eagle Crest, Inc., No. 77114518, 2010 TTAB LEXIS 346, at
*6; see also In re Bose Corp., 546 F.2d 893, 897 (CCPA 1976) (“[T]he 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.”).
Applicant’s specimens of use submitted in support of its application appear as
follows:3
3 Specimens submitted with application on September 28, 2023.

Serial No. 98201363
Help
ES WERE INYEN TEa
I WAS THERE! LACONIA
[the red oval is supplied to highlight proposed mark]; and
100TH RALLY PATCH
MOTORCYCLE WEEK 100th JUNE
N
10 % 18 2023 HAMPSHIRE
.
- 5 -

Serial No. 98201363
- 6 -
Applicant also submitted the following screenshot with its response to an Office
Action using the same image of the t-shirt, but also providing some purchasing
information from an online store:4
.
The “critical question” now is how consumers perceive the proposed mark as it is
displayed on the goods in the above specimens—that is, will consumers perceive the
wording LACONIA MOTORCYCLE WEEK as an indicator of source of the goods or,
4 Attached to Applicant’s response filed on August 28, 2024, using the same image of the t-
shirt being worn by a woman, but also containing purchasing information from a “Rally
Store.”

Serial No. 98201363
- 7 -
instead, as merely ornamental wording on the shirt and patch. In re Peace Love World
Live, LLC, No. 86705287, 2018 TTAB LEXIS 220, at *7 (“The critical question in
determining whether [a proposed mark] functions as a trademark is the commercial
impression it makes on the relevant public, i.e., whether the term sought to be
registered would be perceived as a mark identifying the source of the goods.”).
The Examining Attorney argues:5
In this case, the applicant’s submitted specimen shows the applied-for
mark, “LACONIA MOTORCYCLE WEEK”, located directly on the upper-
center area of the front of the shirt and the middle of the cloth patch, where
ornamental elements often appear. … Furthermore, the design element
that contains the mark is displayed in a relatively large size on the clothing
such that it dominates the overall appearance of the goods. Lastly, the
applied-for mark appears to be a design and slogan that is used in a merely
decorative manner that would be perceived by consumers as having little
or no particular source-identifying significance.
The Examining Attorney concludes that “consumers would view the applied-for
mark as a decorative or ornamental feature of the goods, rather than as a trademark
to indicate the source of the applicant’s goods and to distinguish them from others.”6
Applicant, on the other hand, argues that the Examining Attorney “acknowledges
the specimens show use on the front of a shirt or patch” in the final Office Action,
“but fails to consider whether the public perceives the phrase as identifying a
secondary source of the officially licensed goods, as was the case in In re Olin.”7 The
referenced Board decision, In re Olin Corp., 1973 TTAB LEXIS 308, involved a mark
5 6 TTABVUE 4 (internal citation omitted).
6 6 TTABVUE 4.
7 4 TTABVUE 8.

Serial No. 98201363
- 8 -
described as a stylized letter “O” that had been previously used and registered for
skis. Id. at *1. Based on that fact, the Board, in Olin, held the “T-shirt is ornamented
with applicant’s trademarks, and considering the nature of T-shirts, that particular
ornamentation can serve as an indication of a secondary source of origin.” Id. at *3.
Thus, the Board “conclude[d] that the mark serves as an identifier of a secondary
source and as such is registrable.” Id.
Applicant argues that its use of LACONIA MOTORCYCLE WEEK also serves an
identifier of secondary source. Specifically, Applicant contends that “[t]he consuming
public recognizes LACONIA MOTORCYCLE WEEK as the name of a specific,
municipally controlled event” and that Applicant “exercises quality control” such that
“[m]erchandise bearing the wording is widely understood to be officially licensed
goods.”8 Applicant also attempts to rely on several registrations for marks that
include LACONIA MOTORCYCLE WEEK; however, these registrations are now
cancelled or USPTO records do not indicate that Applicant is the current owner.9
Applicant’s attempt to prove that its applied-for mark LACONIA MOTORCYCLE
WEEK acts as source identifier for the applied-for goods based on secondary source
fails because there is no evidence to substantiate its contentions. See TMEP
8 4 TTABVUE 10.
9 Reg. No. 4277917 (LACONIA MOTORCYCLE WEEK) for goods in Classes 25 was cancelled
on September 13, 2023. Reg. No. 4194656 (LACONIA MOTORCYCLE WEEK) for goods in
Classes 14 and 26 was also cancelled on August 3, 2023. In addition, USPTO records indicate
the last current owner was Shaf International, Inc., not Applicant.
Other registrations for the mark LACONIA BIKE WEEK (Reg. Nos. 4372832 and 4284559)
are cancelled. Reg. No. 4194658 (LACONIA BIKE WEEK) is live, but USPTO records indicate
the current owner is Shaf International, Inc., not Applicant.

Serial No. 98201363
- 9 -
§ 1202.03(c) (discussing “secondary source” and generally how to show that a
proposed mark used on the goods in a decorative or ornamental manner also serves
a source-indicating function based). Specifically, although Applicant asserts that its
proposed mark is already recognized by the public as a source identifier and that
Applicant controls the licensing of the proposed mark, these alleged statements of
fact are not verified by affidavit or supported by any other evidence. Rather, we are
left only with the unverified statements of Applicant’s counsel, which are not
evidence. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed. Cir. 2018)
(quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)
(“Attorney argument is no substitute for evidence.”)). See also In re Embiid, No.
88202890, 2021 TTAB LEXIS 168, at *55 (citation omitted). Moreover, as noted (see
Note 9) and in contrast to the circumstances in Olin, Applicant has not demonstrated
that it owns a live registration for the mark which could serve as a basis for
establishing secondary source.
Without sufficient evidence to support a finding that Applicant’s proposed mark,
as displayed in the specimens of use, may be acting as a “secondary source”
identification role, we agree with the Examining Attorney’s reasoning that the
proposed mark, LACONIA MOTORCYCLE WEEK, will be understood by consumers
as merely ornamental, rather than as a source identifier for the goods. Consumers
encountering the proposed mark on the t-shirt and patch will not perceive it as
performing a trademark function identifying the source of the shirt or patch. The
proposed mark appears among other wording and designs and, in this context, the

Serial No. 98201363
- 10 -
overall commercial impression is that the proposed mark is merely part of a larger
ornamental design containing information about a motorcycle rally, e.g., held in
“June 2023” in “New Hampshire.” Put simply, the consumers will not pull out the
proposed mark as a source identifier.
III. Applicant’s Claim of Acquired Distinctiveness in the
Alternative
Applicant also seeks to overcome the failure to function refusal based on its
contention that it “has presented substantial evidence of acquired distinctiveness
under § 2(f)”10 for LACONIA MOTORCYCLE WEEK. Specifically, Applicant claims:11
Evidence in the record includes … 1. Over 100 years of continuous use of
the same phrase identifying the same event. 2. Exclusive licensing and
control by the City of Laconia since at least 2017. 3. Chain-of-title
assignment evidence. 4. Prior USPTO registrations for the identical mark
owned by Applicant—previously deemed inherently distinctive or
sufficiently distinctive for registration. 5. Specimens showing consistent
commercial use.
Applicant’s assertions are not supported by evidence of record; accordingly, we
cannot rely on them. Again, as discussed above, mere assertions of fact from counsel
cannot substitute for actual evidence, which is required to establish the veracity of
such factual statements. Embiid, 2021 TTAB LEXIS 168, at *55 (“Other than the
argument of Applicant’s counsel, which is no substitute for evidence, there is no proof
of how, how long, and to what extent Applicant’s claimed mark has been used in
10 4 TTABVUE 11.
11 4 TTABVUE 9.

Serial No. 98201363
- 11 -
interstate commerce or otherwise, or indeed whether it has been used at all.”)
(cleaned up and citations omitted).
Moreover, we note Applicant seeks to rely on cancelled registrations and
incorrectly claims that “TMEP § 1212.04(e) expressly states that expired or cancelled
registrations may support a § 2(f) claim when they concern the same wording for
related goods.”12 To the contrary, the TMEP states clearly that “a claim of acquired
distinctiveness may not be based on a registration that is cancelled or expired.”
TMEP § 1212.04(d) (citing 37 C.F.R. § 2.41(a)(1), which provides that “ownership of
one or more active prior registrations on the Principal Register … may be accepted
as prima facie evidence of distinctiveness …”).
In sum, there is insufficient evidence of record to find that Applicant’s proposed
mark LACONIA MOTORCYCLE WEEK has acquired distinctiveness as a source
identifier.
IV. Conclusion
Upon consideration of the applicable law, the evidence of record, and the
arguments of Applicant and the Examining Attorney, we find that Applicant’s
proposed mark LACONIA MOTORCYCLE WEEK, as displayed in the specimens of
use, will be understood by consumers as merely ornamental and not as a source
identifier for the goods listed in the application. Applicant’s assertions, in the
alternative, that its proposed mark has acquired distinctiveness or that there is
12 4 TTABVUE 9.

Serial No. 98201363
- 12 -
secondary source, thus allowing the proposed mark to be perceived by consumers as
a source identifier, are not supported by the record and thus are rejected.
Decision: We affirm the refusal to register Applicant’s mark LACONIA
MOTORCYCLE WEEK under Sections 1, 2, and 45 of the Trademark Act, and
Applicant failed to prove acquired distinctiveness under Section 2(f) of the Trademark
Act.