[{"innerBlocks":[],"name":"core\/freeform","postId":799,"blockType":{"name":"core\/freeform","keywords":[],"attributes":{"content":{"type":"string","source":"html"},"lock":{"type":"object"}},"providesContext":[],"usesContext":[],"supports":{"className":false,"customClassName":false,"reusable":false},"styles":[],"variations":[],"apiVersion":2,"title":"Classic","description":"Use the classic WordPress editor.","category":"text"},"originalContent":" $\"\"$ \n\nThere 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.\n\nThis 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.\n

A. Background to \u2018failure to function as a trademark.\u2019<\/strong><\/p>\nSection 45 of the Lanham Act defines a \u201ctrademark\u201d as \u201cany word, name, symbol or device, or any combination thereof \u2026 used by a person \u2026 to identify and distinguish his or her goods \u2026 from those manufactured or sold by others and to indicate the source of the goods<\/strong>, even if that source is unknown.\u201d 15 U.S.C. Section 1127. [Emphasis added].\n\nSection 1202.04(b) of the Trademark Manual of Examining Procedure<\/u> (TMEP) sets forth the USPTO\u2019s policy about phrases failing to function as marks:\n\n\u201cWidely used messages\u201d 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.\u00a0[Citations omitted].\n\nMessages 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.\u00a0[Citations omitted].\n\nMessages 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\u2019s goods or services from those of others. [Citations omitted].***\n\nAny 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\u2019s manner of use and the manner of use by third parties.\u00a0[Citations omitted].\n\nRegistration refusals on such bases are called \u201cfailure to function\u201d refusals.\n

C. How should trademark practitioners counsel clients about such marks?<\/strong><\/p>\nA 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:\n

\n \t
Consider the information imparted by the mark. Is the mark capable of more than one interpretation?<\/li>\n \t
Check online dictionaries, including slang dictionaries, to see if the phrase has any particular meaning.<\/li>\n \t
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?<\/li>\n<\/ol>\nWhen 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.\n\n
\n\n [1]<\/a> The verse signified by the mark is: \u201cThese things I have spoken to you so that My joy may be in you, and that your joy may be made full.\u201d\n\n [2]<\/a> The numbers of sermons \u201cwere in the hundreds.\u201d id<\/em>. at p. 30.\n\n[3]<\/a> The full listing of services is Application Serial No. 86453853 for \u201cSupply 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.\u201d\n\n \n\n [4]<\/a> Notably, the Applicant had amended its application for registration on the Supplemental Register, which did not overcome the failure to function refusal. id<\/em>. at p. 5.\n\n[5]<\/a> The particular goods and services were \u201cClothing 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\u201d in Class 25 and \u201cEducational 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\u201d in Class 41.\n\n [6]<\/a> The specific goods are \u201cShirts; 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.\u201d\n\n [7]<\/a> 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.","saveContent":" $\"\"$ \n\nThere 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.\n\nThis 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.\n
A. Background to \u2018failure to function as a trademark.\u2019<\/strong><\/p>\nSection 45 of the Lanham Act defines a \u201ctrademark\u201d as \u201cany word, name, symbol or device, or any combination thereof \u2026 used by a person \u2026 to identify and distinguish his or her goods \u2026 from those manufactured or sold by others and to indicate the source of the goods<\/strong>, even if that source is unknown.\u201d 15 U.S.C. Section 1127. [Emphasis added].\n\nSection 1202.04(b) of the Trademark Manual of Examining Procedure<\/u> (TMEP) sets forth the USPTO\u2019s policy about phrases failing to function as marks:\n\n\u201cWidely used messages\u201d 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.\u00a0[Citations omitted].\n\nMessages 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.\u00a0[Citations omitted].\n\nMessages 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\u2019s goods or services from those of others. [Citations omitted].***\n\nAny 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\u2019s manner of use and the manner of use by third parties.\u00a0[Citations omitted].\n\nRegistration refusals on such bases are called \u201cfailure to function\u201d refusals.\n
B. Recent TTAB cases.<\/strong><\/p>\nSince September, 2019, the TTAB has issued a number decisions affirming failure to function refusals.\n\nIn re Lisa Brewer Buffaloe<\/em>, Serial No. 87880862 (TTAB 9\/18\/2019)[Not precedential] involved the mark JOHN 15:11 PUBLICATIONS, generally for electronic books and printed books \u201cin 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.\u201d[1]<\/a> The USPTO Examiner refused registration because the mark failed to function as a source indicator, relying on evidence of use by the Applicant, \u201csermons by religious leaders,[2]<\/a> scholarly analysis, religious and spiritual discussions by Christians discussing the verse or citing it as inspiration,\u201d id<\/em>. 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<\/em>. at pp. 21-23.\n\nConsidering PUBLICATIONS was nondistinctive due to the word being disclaimed by Applicant, the TTAB held the public perception of the mark was \u201cshaped by the ready availability of hundreds of JOHN 15:11 publications online\u201d 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<\/em>. at pp. 30-31.\n\nIn re Flex Ltd.<\/em>, 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]<\/a> The Examiner adduced third-party evidence of use of the phrase to refer to \u201cthe ongoing development and next phase of the Internet of Things (\u201cIoT\u201d) and its use of artificial intelligence.\u201d id<\/em>. at p. 4. Such evidence consisted of articles and blogs, media uses, and excerpts of abstracts. id.<\/em> 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\u2019s services as opposed to the general public) because they would not perceive it as indicating source. id<\/em>. at pp. 21-23.\n\nTEXAS LOVE for hats and shirts met the same fate this past October in In re Texas With Love, LLC<\/em>, 2020 USPQ2d 11290 (TTAB 2020)[Precedential]. The Examiner\u2019s third-party evidence showed \u201cTexas Love\u201d 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 \u201cO\u201d in \u201cLOVE,\u201d 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 \u201cmerely conveys a well-recognized and commonly expressed concept or sentiment\u201d about \u201clove for or from Texas.\u201d id<\/em>. at *3. The marks that had a graphic of Texas\u2019s shape were found to be the legal equivalent of the word \u201cTexas\u201d. id<\/em>. at *5. The Board stated TEXAS LOVE \u201cis too commonly used\u201d by others \u201cin a variety of forms\u201d to be source indicating, and that widespread use of a term \u201cmay be enough to render it incapable of functioning as a trademark, regardless of the type of message.\u201d id<\/em>. at *7. It also was concerned with \u201champering others\u201d in their use of the common phrase TEXAS LOVE for clothing and related goods. id<\/em>.\n\nIn re Nancy D. Greene<\/em>, Serial No. 87830154 (TTAB 11\/18\/2020)[Not precedential], involved LEGAL LANDMINES being registrable for \u201cProviding 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.\u201d[4]<\/a> The Examiner made of record third-party uses of \u201clegal landmines\u201d by business and legal websites to indicate dangerous risks to businesses arising from \u201cconcealed yet incipient crises relating to the law.\u201d id<\/em>. at p. 6. The Examiner also relied on the Applicant\u2019s own use of the mark. id.<\/em> 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.\n\nWORST MOVIE EVER! also failed to function as a trademark for \u201cparody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films\u201d in In re Donald E. Moriarty<\/em>, Serial No. 86367823 (TTAB 11\/23\/2020)[Not precedential]. The Examiner argued the term was in common use for a movie that \u201cis the most wanting in quality, value, or condition of all time\u201d 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\u2019s position, finding WORST MOVIE EVER! was in \u201cfrequent use,\u201d, id<\/em>. at p. 9, and also pointed to the Applicant\u2019s specimen of use, which it found \u201csimply informs prospective consumers that Applicant\u2019s movies are part of the cinematic genre of really bad movies.\u201d id<\/em>. at p. 11. Due to the third-party use, consumers were \u201caccustomed\u201d to seeing the phrase and would not view Applicant\u2019s 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<\/em>. at pp. 12-13.\n\nIn re Team Jesus LLC<\/em>, 2020 USPQ2d 11489 (TTAB 2020)[Precedential] dealt with whether TEAM JESUS failed to function as a mark for numerous garments and entertainment services.[5]<\/a> The Examiner argued that TEAM JESUS was commonplace and in wide use to \u201cconvey a sentiment of affiliation with Jesus Christ and the Christian religion.\u201d id<\/em>. at *1. The Examiner adduced evidence of use of \u201cTeam Jesus\u201d from websites, articles, churches, and blog posts by ministries, and use of the phrase on T-shirts. id<\/em>. at *3 through *6. The TTAB found TEAM JESUS a \u201ccommonplace message of Christian affiliation\u201d and in wide use for a long time by a large number of merchandisers \u201cas an expression of enthusiasm, affection or affiliation.\u201d id<\/em>. at *6. It, therefore, affirmed the refusal to register.\n\nIn re Bunkhouse Management, LLC<\/em>, Serial No. 87539883 (TTAB 1\/29\/2021)[Not precedential] involved the phrase \u201ci love you So much.\u201d in script form for \u201ccharitable fundraising services by means of organizing and conducting special events.\u201d The Examiner refused registration arguing that the phrase failed to function as a mark because it conveyed \u201ca commonplace message of deep affection.\u201d id.<\/em> 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\u2019s 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 \u201ca widely used expression of a sentiment,\u201d id<\/em>. at p. 20, and the widespread use by others rendered it \u201c\u2019incapable of functioning as a trademark, regardless of the type of message.\u201d id<\/em>. at pp. 20-21.\n\nMAMA BEAR also failed to function as a trademark for articles of clothing,[6]<\/a> in In re Sara Marie Duncan d\/b\/a Loved by Hannah and Eli, Inc.<\/em>, 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 \u201cThe Story of Goldilocks and the Three Bears\u201d and others\u2019 uses, such as in \u201cParenting\u201d magazine, four blogs and a book discussing the term \u201cMama Bear.\u201d Also included were the Applicant\u2019s use of MAMA BEAR on merchandise and her website, as well as many third-party uses on clothing from 23 different websites.\n\nThe 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 \u201cpresenting a different context.\u201d id<\/em>. at p 21.\n\nThe 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 \u201cconveys a message of aggressive protective parenting.\u201d I=id<\/em>. at p. 23.\n\nThe TTAB also reversed a failure to function refusal in In re Rodeowave Entertainment, LLC<\/em>, Serial No. 87801076 (TTAB 11\/13\/2020)[Not precedential] involving the phrase JUST ANOTHER DAY IN PARADISE for a variety of goods.[7]<\/a> 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.<\/em> at pp. 5-10. The TTAB noted that such \u201c[p]rominent ornamental use\u201d is \u201cprobative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.\u201d id.<\/em> 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 \u201cused in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message.\u201d id.<\/em> 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 \u201cpotential ambiguity,\u201d making it \u201cless likely that consumers would perceive it as conveying\u201d a singular informational message, which distinguished it from other \u201cwell-recognized and unequivocal expressions found to be incapable of serving as source identifiers.\u201d id<\/em>. 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<\/em>. at p. 14.\n
C. How should trademark practitioners counsel clients about such marks?<\/strong><\/p>\nA 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:\n
\n \t
Consider the information imparted by the mark. Is the mark capable of more than one interpretation?<\/li>\n \t
Check online dictionaries, including slang dictionaries, to see if the phrase has any particular meaning.<\/li>\n \t
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?<\/li>\n<\/ol>\nWhen 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.\n\n
\n\n [1]<\/a> The verse signified by the mark is: \u201cThese things I have spoken to you so that My joy may be in you, and that your joy may be made full.\u201d\n\n [2]<\/a> The numbers of sermons \u201cwere in the hundreds.\u201d id<\/em>. at p. 30.\n\n[3]<\/a> The full listing of services is Application Serial No. 86453853 for \u201cSupply 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.\u201d\n\n \n\n [4]<\/a> Notably, the Applicant had amended its application for registration on the Supplemental Register, which did not overcome the failure to function refusal. id<\/em>. at p. 5.\n\n[5]<\/a> The particular goods and services were \u201cClothing 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\u201d in Class 25 and \u201cEducational 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\u201d in Class 41.\n\n [6]<\/a> The specific goods are \u201cShirts; 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.\u201d\n\n [7]<\/a> 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.","order":0,"get_parent":{},"attributes":{"content":" $\"\"$ \n\nThere 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.\n\nThis 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.\n
A. Background to \u2018failure to function as a trademark.\u2019<\/strong><\/p>\nSection 45 of the Lanham Act defines a \u201ctrademark\u201d as \u201cany word, name, symbol or device, or any combination thereof \u2026 used by a person \u2026 to identify and distinguish his or her goods \u2026 from those manufactured or sold by others and to indicate the source of the goods<\/strong>, even if that source is unknown.\u201d 15 U.S.C. Section 1127. [Emphasis added].\n\nSection 1202.04(b) of the Trademark Manual of Examining Procedure<\/u> (TMEP) sets forth the USPTO\u2019s policy about phrases failing to function as marks:\n\n\u201cWidely used messages\u201d 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.\u00a0[Citations omitted].\n\nMessages 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.\u00a0[Citations omitted].\n\nMessages 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\u2019s goods or services from those of others. [Citations omitted].***\n\nAny 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\u2019s manner of use and the manner of use by third parties.\u00a0[Citations omitted].\n\nRegistration refusals on such bases are called \u201cfailure to function\u201d refusals.\n
B. Recent TTAB cases.<\/strong><\/p>\nSince September, 2019, the TTAB has issued a number decisions affirming failure to function refusals.\n\nIn re Lisa Brewer Buffaloe<\/em>, Serial No. 87880862 (TTAB 9\/18\/2019)[Not precedential] involved the mark JOHN 15:11 PUBLICATIONS, generally for electronic books and printed books \u201cin 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.\u201d[1]<\/a> The USPTO Examiner refused registration because the mark failed to function as a source indicator, relying on evidence of use by the Applicant, \u201csermons by religious leaders,[2]<\/a> scholarly analysis, religious and spiritual discussions by Christians discussing the verse or citing it as inspiration,\u201d id<\/em>. 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<\/em>. at pp. 21-23.\n\nConsidering PUBLICATIONS was nondistinctive due to the word being disclaimed by Applicant, the TTAB held the public perception of the mark was \u201cshaped by the ready availability of hundreds of JOHN 15:11 publications online\u201d 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<\/em>. at pp. 30-31.\n\nIn re Flex Ltd.<\/em>, 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]<\/a> The Examiner adduced third-party evidence of use of the phrase to refer to \u201cthe ongoing development and next phase of the Internet of Things (\u201cIoT\u201d) and its use of artificial intelligence.\u201d id<\/em>. at p. 4. Such evidence consisted of articles and blogs, media uses, and excerpts of abstracts. id.<\/em> 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\u2019s services as opposed to the general public) because they would not perceive it as indicating source. id<\/em>. at pp. 21-23.\n\nTEXAS LOVE for hats and shirts met the same fate this past October in In re Texas With Love, LLC<\/em>, 2020 USPQ2d 11290 (TTAB 2020)[Precedential]. The Examiner\u2019s third-party evidence showed \u201cTexas Love\u201d 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 \u201cO\u201d in \u201cLOVE,\u201d 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 \u201cmerely conveys a well-recognized and commonly expressed concept or sentiment\u201d about \u201clove for or from Texas.\u201d id<\/em>. at *3. The marks that had a graphic of Texas\u2019s shape were found to be the legal equivalent of the word \u201cTexas\u201d. id<\/em>. at *5. The Board stated TEXAS LOVE \u201cis too commonly used\u201d by others \u201cin a variety of forms\u201d to be source indicating, and that widespread use of a term \u201cmay be enough to render it incapable of functioning as a trademark, regardless of the type of message.\u201d id<\/em>. at *7. It also was concerned with \u201champering others\u201d in their use of the common phrase TEXAS LOVE for clothing and related goods. id<\/em>.\n\nIn re Nancy D. Greene<\/em>, Serial No. 87830154 (TTAB 11\/18\/2020)[Not precedential], involved LEGAL LANDMINES being registrable for \u201cProviding 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.\u201d[4]<\/a> The Examiner made of record third-party uses of \u201clegal landmines\u201d by business and legal websites to indicate dangerous risks to businesses arising from \u201cconcealed yet incipient crises relating to the law.\u201d id<\/em>. at p. 6. The Examiner also relied on the Applicant\u2019s own use of the mark. id.<\/em> 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.\n\nWORST MOVIE EVER! also failed to function as a trademark for \u201cparody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films\u201d in In re Donald E. Moriarty<\/em>, Serial No. 86367823 (TTAB 11\/23\/2020)[Not precedential]. The Examiner argued the term was in common use for a movie that \u201cis the most wanting in quality, value, or condition of all time\u201d 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\u2019s position, finding WORST MOVIE EVER! was in \u201cfrequent use,\u201d, id<\/em>. at p. 9, and also pointed to the Applicant\u2019s specimen of use, which it found \u201csimply informs prospective consumers that Applicant\u2019s movies are part of the cinematic genre of really bad movies.\u201d id<\/em>. at p. 11. Due to the third-party use, consumers were \u201caccustomed\u201d to seeing the phrase and would not view Applicant\u2019s 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<\/em>. at pp. 12-13.\n\nIn re Team Jesus LLC<\/em>, 2020 USPQ2d 11489 (TTAB 2020)[Precedential] dealt with whether TEAM JESUS failed to function as a mark for numerous garments and entertainment services.[5]<\/a> The Examiner argued that TEAM JESUS was commonplace and in wide use to \u201cconvey a sentiment of affiliation with Jesus Christ and the Christian religion.\u201d id<\/em>. at *1. The Examiner adduced evidence of use of \u201cTeam Jesus\u201d from websites, articles, churches, and blog posts by ministries, and use of the phrase on T-shirts. id<\/em>. at *3 through *6. The TTAB found TEAM JESUS a \u201ccommonplace message of Christian affiliation\u201d and in wide use for a long time by a large number of merchandisers \u201cas an expression of enthusiasm, affection or affiliation.\u201d id<\/em>. at *6. It, therefore, affirmed the refusal to register.\n\nIn re Bunkhouse Management, LLC<\/em>, Serial No. 87539883 (TTAB 1\/29\/2021)[Not precedential] involved the phrase \u201ci love you So much.\u201d in script form for \u201ccharitable fundraising services by means of organizing and conducting special events.\u201d The Examiner refused registration arguing that the phrase failed to function as a mark because it conveyed \u201ca commonplace message of deep affection.\u201d id.<\/em> 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\u2019s 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 \u201ca widely used expression of a sentiment,\u201d id<\/em>. at p. 20, and the widespread use by others rendered it \u201c\u2019incapable of functioning as a trademark, regardless of the type of message.\u201d id<\/em>. at pp. 20-21.\n\nMAMA BEAR also failed to function as a trademark for articles of clothing,[6]<\/a> in In re Sara Marie Duncan d\/b\/a Loved by Hannah and Eli, Inc.<\/em>, 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 \u201cThe Story of Goldilocks and the Three Bears\u201d and others\u2019 uses, such as in \u201cParenting\u201d magazine, four blogs and a book discussing the term \u201cMama Bear.\u201d Also included were the Applicant\u2019s use of MAMA BEAR on merchandise and her website, as well as many third-party uses on clothing from 23 different websites.\n\nThe 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 \u201cpresenting a different context.\u201d id<\/em>. at p 21.\n\nThe 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 \u201cconveys a message of aggressive protective parenting.\u201d I=id<\/em>. at p. 23.\n\nThe TTAB also reversed a failure to function refusal in In re Rodeowave Entertainment, LLC<\/em>, Serial No. 87801076 (TTAB 11\/13\/2020)[Not precedential] involving the phrase JUST ANOTHER DAY IN PARADISE for a variety of goods.[7]<\/a> 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.<\/em> at pp. 5-10. The TTAB noted that such \u201c[p]rominent ornamental use\u201d is \u201cprobative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.\u201d id.<\/em> 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 \u201cused in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message.\u201d id.<\/em> 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 \u201cpotential ambiguity,\u201d making it \u201cless likely that consumers would perceive it as conveying\u201d a singular informational message, which distinguished it from other \u201cwell-recognized and unequivocal expressions found to be incapable of serving as source identifiers.\u201d id<\/em>. 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<\/em>. at p. 14.\n
C. How should trademark practitioners counsel clients about such marks?<\/strong><\/p>\nA 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:\n
\n \t
Consider the information imparted by the mark. Is the mark capable of more than one interpretation?<\/li>\n \t
Check online dictionaries, including slang dictionaries, to see if the phrase has any particular meaning.<\/li>\n \t
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?<\/li>\n<\/ol>\nWhen 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.\n\n
\n\n [1]<\/a> The verse signified by the mark is: \u201cThese things I have spoken to you so that My joy may be in you, and that your joy may be made full.\u201d\n\n [2]<\/a> The numbers of sermons \u201cwere in the hundreds.\u201d id<\/em>. at p. 30.\n\n[3]<\/a> The full listing of services is Application Serial No. 86453853 for \u201cSupply 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.\u201d\n\n \n\n [4]<\/a> Notably, the Applicant had amended its application for registration on the Supplemental Register, which did not overcome the failure to function refusal. id<\/em>. at p. 5.\n\n[5]<\/a> The particular goods and services were \u201cClothing 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\u201d in Class 25 and \u201cEducational 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\u201d in Class 41.\n\n [6]<\/a> The specific goods are \u201cShirts; 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.\u201d\n\n [7]<\/a> 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."},"attributesType":{"content":{"type":"string","source":"html"},"lock":{"type":"object"}},"dynamicContent":null}]

Considering a Common Phrase as a Trademark? Don’t Expect it to be Registrable.