There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any kind, but because they fail to function as trademarks due to their informational characteristics and widespread use.
This blog provides the background to refusals common phrases may encounter in the U.S. Patent and Trademark Office (USPTO), recent cases decided by the TTAB involving such phrases and how practitioners should deal with searches for and clearance of marks involving phrases.
- Background to ‘failure to function as a trademark.’
Section 45 of the Lanham Act defines a “trademark” as “any word, name, symbol or device, or any combination thereof … used by a person … to identify and distinguish his or her goods … 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. Section 1127. [Emphasis added].
Section 1202.04(b) of the Trademark Manual of Examining Procedure (TMEP) sets forth the USPTO’s policy about phrases failing to function as marks:
“Widely used messages” include slogans, terms, and phrases used by various parties to convey ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages that are in common use or are otherwise generally understood. The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services. [Citations omitted].
Messages that merely convey ordinary, familiar concepts or sentiments that are used by a variety of sources in the marketplace are considered commonplace and will be understood as conveying the ordinary concept or sentiment normally associated with them, rather than serving any source-indicating function. [Citations omitted].
Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others. [Citations omitted].***
Any evidence demonstrating that the public would perceive the wording merely as conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message, supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, Internet search results lists if sufficient surrounding text is included, social-media pages, product fact sheets, and other promotional materials) showing the applicant’s manner of use and the manner of use by third parties. [Citations omitted].
Registration refusals on such bases are called “failure to function” refusals.
- Recent TTAB cases.
Since September, 2019, the TTAB has issued a number decisions affirming failure to function refusals.
In re Lisa Brewer Buffaloe, Serial No. 87880862 (TTAB 9/18/2019)[Not precedential] involved the mark JOHN 15:11 PUBLICATIONS, generally for electronic books and printed books “in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the Bible verse John 15:11.”[1] The USPTO Examiner refused registration because the mark failed to function as a source indicator, relying on evidence of use by the Applicant, “sermons by religious leaders,[2] scholarly analysis, religious and spiritual discussions by Christians discussing the verse or citing it as inspiration,” id. at p. 8, as well as the mark appearing on a cellphone case, a T-shirt, a pencil holder, coasters, a mug, an electric switch plate and a mouse pad. id. at pp. 21-23.
Considering PUBLICATIONS was nondistinctive due to the word being disclaimed by Applicant, the TTAB held the public perception of the mark was “shaped by the ready availability of hundreds of JOHN 15:11 publications online” as well as the variety of goods on which the phrase was used, and that the mark was merely informational about the goods as opposed to source-indicating. id. at pp. 30-31.
In re Flex Ltd., Serial Nos. 86453852 and 86493735 (TTAB 12/9/2019)[Not precedential] involved INTELLIGENCE OF THINGS for, inter alia, supply chain management services, business management services and custom manufacture of electronics products.[3] The Examiner adduced third-party evidence of use of the phrase to refer to “the ongoing development and next phase of the Internet of Things (“IoT”) and its use of artificial intelligence.” id. at p. 4. Such evidence consisted of articles and blogs, media uses, and excerpts of abstracts. id. at pp. 4-9. The TTAB found that INTELLIGENCE OF THINGS would not be perceived as a service mark, was informational about the services and was in wide use. It thus held the term failed to function as a service mark to the relevant purchasing public (i.e., customers for the Applicant’s services as opposed to the general public) because they would not perceive it as indicating source. id. at pp. 21-23.
TEXAS LOVE for hats and shirts met the same fate this past October in In re Texas With Love, LLC, 2020 USPQ2d 11290 (TTAB 2020)[Precedential]. The Examiner’s third-party evidence showed “Texas Love” used as a product designation for T-shirts graphically bearing LOVE within the shape of Texas, or the shape of Texas incorporated as the letter “O” in “LOVE,” as well as such marks being used for an online retailer of gifts and souvenirs relating to Texas, wall art, a car window sticker and a sign. The TTAB agreed with the Examiner that TEXAS LOVE failed to function as a mark because, to the relevant purchasing public, it “merely conveys a well-recognized and commonly expressed concept or sentiment” about “love for or from Texas.” id. at *3. The marks that had a graphic of Texas’s shape were found to be the legal equivalent of the word “Texas”. id. at *5. The Board stated TEXAS LOVE “is too commonly used” by others “in a variety of forms” to be source indicating, and that widespread use of a term “may be enough to render it incapable of functioning as a trademark, regardless of the type of message.” id. at *7. It also was concerned with “hampering others” in their use of the common phrase TEXAS LOVE for clothing and related goods. id.
In re Nancy D. Greene, Serial No. 87830154 (TTAB 11/18/2020)[Not precedential], involved LEGAL LANDMINES being registrable for “Providing coaching services in the field of business; Educational services, namely, seminars, conferences, and workshops in the field of business; Business coaching services in the field of corporate culture, business consulting, employee and procedure policy review services, namely, business review of policies and procedures for legal compliance, and documentation of the internal processes and retention of institutional knowledge.”[4] The Examiner made of record third-party uses of “legal landmines” by business and legal websites to indicate dangerous risks to businesses arising from “concealed yet incipient crises relating to the law.” id. at p. 6. The Examiner also relied on the Applicant’s own use of the mark. id. at pp. 10-11. The Board held in a 2-1 decision that LEGAL LANDMINES conveyed a message about the dangers of unexpected legal crises and was in wide use by third parties to convey the same information, and affirmed the refusal to register.
WORST MOVIE EVER! also failed to function as a trademark for “parody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films” in In re Donald E. Moriarty, Serial No. 86367823 (TTAB 11/23/2020)[Not precedential]. The Examiner argued the term was in common use for a movie that “is the most wanting in quality, value, or condition of all time” and adduced a number of stories and articles from newspapers, magazines, media sites, and movie reviewers and others in support. The TTAB accepted the Examiner’s position, finding WORST MOVIE EVER! was in “frequent use,”, id. at p. 9, and also pointed to the Applicant’s specimen of use, which it found “simply informs prospective consumers that Applicant’s movies are part of the cinematic genre of really bad movies.” id. at p. 11. Due to the third-party use, consumers were “accustomed” to seeing the phrase and would not view Applicant’s use of the term as indicating a sole source. The TTAB also did not want to allow Applicant to prevent competitors from using the term. id. at pp. 12-13.
In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020)[Precedential] dealt with whether TEAM JESUS failed to function as a mark for numerous garments and entertainment services.[5] The Examiner argued that TEAM JESUS was commonplace and in wide use to “convey a sentiment of affiliation with Jesus Christ and the Christian religion.” id. at *1. The Examiner adduced evidence of use of “Team Jesus” from websites, articles, churches, and blog posts by ministries, and use of the phrase on T-shirts. id. at *3 through *6. The TTAB found TEAM JESUS a “commonplace message of Christian affiliation” and in wide use for a long time by a large number of merchandisers “as an expression of enthusiasm, affection or affiliation.” id. at *6. It, therefore, affirmed the refusal to register.
In re Bunkhouse Management, LLC, Serial No. 87539883 (TTAB 1/29/2021)[Not precedential] involved the phrase “i love you So much.” in script form for “charitable fundraising services by means of organizing and conducting special events.” The Examiner refused registration arguing that the phrase failed to function as a mark because it conveyed “a commonplace message of deep affection.” id. at p. 3. The Examiner relied on dictionary definitions, numerous uses in connection with charitable fundraising, and unrelated items, such as the phrase appearing on jewelry, the phrase as part of the title of a children’s book, numerous third-party uses of the phrase for different purposes and numerous Internet retailers using the phrase. The Board found the term did not have source-indicating significance, instead being “a widely used expression of a sentiment,” id. at p. 20, and the widespread use by others rendered it “’incapable of functioning as a trademark, regardless of the type of message.” id. at pp. 20-21.
MAMA BEAR also failed to function as a trademark for articles of clothing,[6] in In re Sara Marie Duncan d/b/a Loved by Hannah and Eli, Inc., Serial No. 86923714 (TTAB 2/3/2021)[Not precedential]. The record before the TTAB contained definitions of MAMA BEAR (generally, an extremely protective mother), references in literature to the term from the fairy tale “The Story of Goldilocks and the Three Bears” and others’ uses, such as in “Parenting” magazine, four blogs and a book discussing the term “Mama Bear.” Also included were the Applicant’s use of MAMA BEAR on merchandise and her website, as well as many third-party uses on clothing from 23 different websites.
The Applicant made of record 20 extant Principal Register registrations for MAMA BEAR per se or containing MAMA BEAR not as a disclaimed term for a variety of different goods and services to support her argument that MAMA BEAR is registrable. The TTAB dismissed these as generally not being for MAMA BEAR per se and not being for clothing, thus “presenting a different context.” id. at p 21.
The evidence of definitions and evidence of third-party use resulted in the TTAB holding MAMA BEAR failed to function as a trademark because it was widely used and “conveys a message of aggressive protective parenting.” I=id. at p. 23.
The TTAB also reversed a failure to function refusal in In re Rodeowave Entertainment, LLC, Serial No. 87801076 (TTAB 11/13/2020)[Not precedential] involving the phrase JUST ANOTHER DAY IN PARADISE for a variety of goods.[7] The Examiner in this case adduced seven media uses of the term as well as wall hangings, a mug, a tumbler, a pillow, a T-shirt, pillow covers, an art print and a rug on which the phrase appeared. id. at pp. 5-10. The TTAB noted that such “[p]rominent ornamental use” is “probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.” id. at p. 10. It also examined the nature of the message made by the phrase. It found the phrase was not proven by the evidence to be “used in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message.” id. at pp. 11-12. Additionally, the Examiner had ascribed different interpretations to the phrase in his office actions. The TTAB thus considered JUST ANOTHER DAY IN PARADISE possessing “potential ambiguity,” making it “less likely that consumers would perceive it as conveying” a singular informational message, which distinguished it from other “well-recognized and unequivocal expressions found to be incapable of serving as source identifiers.” id. at p. 13. It also found that the phrase has not been in sufficiently widespread use to render it incapable of indicating source. Consequently, the TTAB reversed the refusal to register. id. at p. 14.
- How should trademark practitioners counsel clients about such marks?
A phrase mark that conveys information of some kind presents difficulty for a trademark practitioner. If researching such a mark during the searching and clearance process, a practitioner should, in addition to standard searching:
- Consider the information imparted by the mark. Is the mark capable of more than one interpretation?
- Check online dictionaries, including slang dictionaries, to see if the phrase has any particular meaning.
- Search the terms using the various Internet search engines available to determine whether the phrase is in widespread use. If in widespread use, are there different purchaser groups than those for the goods/services being searched with the mark?
When such information is gathered, a practitioner will be in a better position to counsel his or her client about the registrability of the phrase, when measured against the TTAB cases dealing with failure to function refusals to register marks.
[1] The verse signified by the mark is: “These things I have spoken to you so that My joy may be in you, and that your joy may be made full.”
[2] The numbers of sermons “were in the hundreds.” id. at p. 30.
[3] The full listing of services is Application Serial No. 86453853 for “Supply chain management services; business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain synchronization, supply and demand forecasting, and product distribution processes for others in International Class 35; and, Application Serial No. 86493735 for: Custom manufacture of electronics, power supplies, lighting and computer goods for others; technical support services, namely providing technical advice related to the manufacture of electronics, power supplies, lighting and computer goods in International Class 40 and engineering services, consulting services in the field of new product development in the fields of electronics, power supplies, lighting and computers; new product design services; research and development of new products in International Class 42.”
[4] Notably, the Applicant had amended its application for registration on the Supplemental Register, which did not overcome the failure to function refusal. id. at p. 5.
[5] The particular goods and services were “Clothing and wearing apparel in the nature of footwear, headgear, namely, hats, caps; skull caps, hooded sweatshirts, ascots, articles of outer clothing, namely, coats, overcoats, rain coats, ponchos; shirts, woven shirts, dress shirts, polo shirts, suits, ties, sweatshirts, hooded sweatshirts, fleece tops and bottoms, pullover fleece tops, jackets, snowsuits, pants, trousers, shorts, tank tops, rainwear, cloth bibs, skirts, blouses, dresses, suspenders, sweaters, athletic uniforms, warm-up suits, jogging suits, shoes, boots, sneakers, sandals, booties, slipper socks, swimwear, scarves, dressing gowns, boxer shorts, socks, T-shirts; sun visors being headwear, sleepwear, pajamas, slippers, underwear, wrist bands as clothing, headbands, robes; footwear and headwear for babies and toddlers; articles of clothing for babies and toddlers, namely, romper suits, shawls, bibs not of paper and booties” in Class 25 and “Educational and entertainment services for the purpose of addressing, developing, and promoting religious awakening and religious devotion, namely, organizing, arranging, and conducting cultural and art events, concerts, dramatic theater productions, and community festivals featuring a variety of activities in the nature of sporting events, art exhibitions, flea markets, ethnic dances and the like to develop and enhance the spiritual lives of individuals” in Class 41.
[6] The specific goods are “Shirts; Hooded sweat shirts; Knit shirts; Long-sleeved shirts; Polo shirts; Short-sleeved or long-sleeved t-shirts; Sleep shirts; Sweat shirts; T-shirts; Tee shirts; none of the foregoing intended for babies or children.”
[7] Those goods were Candles in Class 4; Flatware, namely, forks, knives, and spoons in Class 8; Lamp shades; Lamps; Lamps for festive decoration; Lamps for outdoor use; Portable fire pits in Class 11; Art prints; Book ends; Coasters made of paper; Coasters of cardboard; Posters; Wall decals in Class 16; Pillows; Furniture, mirrors, picture frames in Class 20; Bottle openers; Candle holders; Coasters, not of paper or textile; Dinnerware; Insulating sleeve holder for beverage cups; Insulating sleeve holder for bottles; Insulating sleeve holders for beverage cans; Margarita glasses; Pitchers; Pot holders; Salt and pepper shakers; Trivets; Wine glasses; Beer mugs; Beverage glassware; Cups and mugs; Dishes and plates; Drinking straws; Drinking glasses, namely, tumblers; Leather coasters; Non-electric portable beverage coolers; Pillar candle plates; Plastic coasters; Portable coolers, non-electric; Votive candle holders in Class 21; Bed and table linen, wall hangings of textile; Bed blankets; Bed covers; Bed sheets; Bed skirts; Bed spreads; Bed throws; Pillow cases; Pillow covers; Towels in Class 24; Decorative wall hangings, not of textile; Rugs in Class 27; and, Christmas tree ornaments and decorations in Class 28.
