Section 45 of the Trademark Act defines a "trademark" as a "word, name, symbol, or device, or any combination thereof" that is used or intended to be used in commerce "to identify and distinguish his or her goods." 15 U.S.C §1127 (emphasis added). Before rights in a term as a trademark can be established, the subject matter to which the term is applied must be "goods in trade." Incidental items that an applicant uses in conducting its business (such as letterhead, invoices, reports, boxes, and business forms), as opposed to items sold or transported in commerce for use by others, are not "goods in trade." See In re S'holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (finding that reports are not goods in trade, where applicant is not engaged in the sale of reports, but solely in furnishing financial reporting services, and reports are merely conduit through which services are rendered); In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162-63 (TTAB 2013) (finding that applicant’s annual report does not constitute a "good in trade," but rather "is a common and necessary adjunct to the rendering of applicant's investment management and research services, that is, it is one of the means through which it provides investment services"); In re Ameritox Ltd., 101 USPQ2d 1081, 1085 (TTAB 2011) (finding no evidence that applicant was engaged in selling printed reports apart from its laboratory testing services and that the reports were part and parcel of the services); In re MGA Ent., Inc., 84 USPQ2d 1743, 1746-47 (TTAB 2007) (applicant’s trapezoidal cardboard boxes for toys, games, and playthings held to be merely point of sale containers for applicant’s primary goods and not separate goods in trade, where there was no evidence that applicant is a manufacturer of boxes or that applicant is engaged in selling boxes as commodities in trade); In re Compute-Her-Look, Inc., 176 USPQ 445, 446-47 (TTAB 1972) (finding that reports and printouts are not goods in trade, where they are merely the means by which the results of a beauty analysis service is transmitted and have no viable existence separate and apart from the service); Ex parte Bank of Am. Nat’l Tr. & Sav. Ass’n, 118 USPQ 165, 165 (Comm’r Pats. 1958) (mark not registrable for passbooks, checks, and other printed forms, where forms are used only as "necessary 'tools' in the performance of [banking services], and [applicant] is not engaged either in printing or selling forms as commodities in trade.").
The determination of whether an applicant's identified goods comprise independent goods in trade, or are merely incidental to the applicant's primary goods and/or services, is a factual determination to be made on a case-by-case basis. In re Thomas White Int’l, Ltd., 106 USPQ2d at 1161 (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012)); see In re MGA Ent., Inc., 84 USPQ2d at 1746. Factors to consider include "whether [applicant's good]: (1) is simply the conduit or necessary tool useful only to obtain applicant’s [primary goods and/or] services; (2) is so inextricably tied to and associated with the [primary goods and/or] service as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the [primary goods and/or] services." In re Thomas White Int’l, Ltd., 106 USPQ2d at 1162 (citing Lens.com, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); see In re MGA Ent., Inc., 84 USPQ2d at 1746-47. None of these factors is dispositive. Lens.com, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676.
Affixing a mark to an item that is transported in commerce does not in and of itself establish that the mark is used on "goods." While a formal sale is not always necessary, items sold or transported in commerce are not "goods in trade" unless they have utility to others as the type of product named in the trademark application.
Example: Holiday greeting cards sent by a law firm to its clients are not "goods," where applicant is merely sending its own cards through the mail as a holiday greeting, and the cards are not suitable for use by the recipients as a greeting card.
See Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 199 USPQ 722 (C.C.P.A. 1978) (holding plaster mockup of toy truck not goods in trade where there was no evidence the mockup was actually used as a toy); Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) , aff’d, 108 F.3d 1392 (Fed. Cir. 1997) (holding mark not registrable for games, where purported games were advertising flyers used to promote applicant’s services and had no real utilitarian function or purpose as games); In re Douglas Aircraft Co., 123 USPQ 271 (TTAB 1959) (holding books, pamphlets, and brochures that served only to explain and advertise the goods in which applicant dealt were not "goods"); cf. In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968) (holding ball point pens used to promote applicant’s tools were goods in trade, where they had a utilitarian function and purpose, and had been sold to applicant’s franchised dealers and transported in commerce under mark); In re United Merchs. & Mfrs., Inc., 154 USPQ 625 (TTAB 1967) (holding calendar used to promote applicant’s plastic film constituted goods in trade, where calendar had a utilitarian function and purpose in and of itself, and had been regularly distributed in commerce for several years).
In In re MGA Entertainment, Inc., 84 USPQ2d 1743, 1746 (TTAB 2007) , the Trademark Trial and Appeal Board rejected applicant’s argument that trapezoidal cardboard boxes for toys, games, playthings, puzzles, and laptop play units had use beyond holding the goods at the point of sale, in that the laptop play-unit box functions as an ongoing carrying case for the unit, and the puzzle box might be used to store puzzle pieces when not in use. Finding the boxes to be merely point-of-sale containers for the primary goods and not separate goods in trade, the Board stated that "the mere fact that original boxes or packaging may be used to store products does not infuse such boxes or packaging with additional utility such that they constitute goods in trade," and that there was neither any indication that the laptop computer boxes were labeled as a carrying case nor any evidence that applicant promoted the boxes as carrying cases or that children actually used them as carrying cases.
If the specimen, identification of goods, or other evidence in the record indicate that the applicant uses the proposed mark only on items incidental to conducting its own business, as opposed to items intended to be used by others, the examining attorney must refuse registration on the Principal Register under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the proposed mark is not used on "goods in trade."
If a mark is not used on "goods in trade," it is not registrable on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), or on the Supplemental Register.
If some but not all of the items listed in the identification of goods are found not to be "goods in trade," it is not necessary to refuse registration of the entire application, but the examining attorney must require that these items be deleted from the identification of goods before approving the mark for publication or registration.
In an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the question of whether a proposed mark is used on goods in trade usually does not arise until the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ) because this issue is based on the manner in which the mark is used. However, if the identification of goods in a §1(b) application includes items that do not appear to be goods in trade, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. If the record indicates that the mark will not be used on goods in trade, without the need to await consideration of the specimen(s), the examining attorney may issue the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a refusal based on the lack of use on goods in trade where the record clearly indicates that the mark will not be used on goods in trade. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
Columns, sections, and supplements of a publication that are printed, downloadable, or recorded on electronic media are normally not considered to be separate "goods" or "goods in trade," unless they are sold, syndicated, or offered for syndication separate and apart from the larger publication in which they appear (see TMEP §1202.07(a)(i)), or are non-syndicated and considered "goods in trade" under the three-part test set forth in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012) (see TMEP §1202.07(a)(ii) for the Lens.com test). See In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19 & n.20, *20 (TTAB 2023); In re Broad. Publ’ns, Inc., 135 USPQ 374, 375 (TTAB 1962); Ex parte Meredith Publ’g, 109 USPQ 426, 426 (Comm’r Pats. 1956).
Historically, absent evidence of acquired distinctiveness, non-syndicated columns and sections available in print format or on recorded media were not considered "goods in trade," based on caselaw from "a time when news or opinion columns were only available to consumers as part of the overall purchase of a particular newspaper, magazine or other type of publication in print format." In re The N.Y. Times Co., 2023 USPQ2d 392, at *7-8 (citing In re Broad. Publ’ns, 135 USPQ at 374; Ex parte Meredith Publ’g, 109 USPQ at 426). However, in In re The New York Times Co., the Trademark Trial and Appeal Board held that non-syndicated columns or sections can in fact be goods in trade:
[C]hanges in the marketplace for the delivery of news and opinion content have impacted consumer perceptions of what titles of non-syndicated columns represent, leading us to conclude that the correct legal standard for determining whether a non-syndicated column is a good in trade should no longer depend on the format in which it is offered. Whether a non-syndicated column that is, for example, "printed, downloadable, or recorded on electronic media," TMEP Section 1202.07(a), is a good in trade should be analyzed using the same standard we use to assess goods in trade issues in other contexts. We therefore take the opportunity to align the standards by adopting the three-part test set forth by the U.S. Court of Appeals of the Federal Circuit in Lens.com as our new test moving forward for non-syndicated print columns or sections in printed publications or recorded media. By doing so, we now have one uniform test for analyzing "goods in trade."
2023 USPQ2d 392, at *18-19. See TMEP §1206 regarding "goods-in-trade" refusals in general and the Lens.com test and TMEP §1202.07(a)(ii) regarding the "goods-in-trade" refusal and the Lens.com test as applied to non-syndicated columns and sections of a publication.
Columns and sections of printed publications, downloadable publications, or publications recorded on electronic media that are separately sold, syndicated, or offered for syndication do constitute "goods in trade." See In re The N.Y. Times Co., 2023 USPQ2d 392, at *19 n.20 (TTAB 2023). A mark that identifies a column or section that is separately syndicated or offered for syndication is registrable on the Principal Register without a claim of acquired distinctiveness under Trademark Act §2(f), 15 U.S.C. §1052(f), if registration is not barred by other sections of the Act.
Whether a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication is separate "goods in trade" is determined by applying the three-part test set forth in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012). In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19 (TTAB 2023).
Under the Lens.com test, the factors to consider when evaluating whether an applicant’s non-syndicated column or section of a printed publication, downloadable publication, or publication recorded on electronic media is "goods in trade" include whether the column or section is:
Lens.com, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676 (citing In re S’holders Data Corp., 495 F.2d. 1360, 1360-61, 181 USPQ 722, 723 (C.C.P.A. 1974); In re MGA Ent., Inc., 84 USPQ2d 1743, 1746-47 (TTAB 2007); In re Compute-Her-Look, Inc., 176 USPQ 445, 446-47 (TTAB 1972); Ex parte Bank of Am. Nat’l Tr. & Sav. Ass’n, 118 USPQ 165, 165 (Comm’r Pats. 1958)). None of these factors is dispositive. Id. They are evaluated in addition to "any other evidence that may be relevant to the particular case." In re The N.Y. Times Co., 2023 USPQ2d 392, at *26.
If the record indicates that the mark identifies a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication, and the evidence of record fails to establish the applicant’s goods as "goods in trade" under the Lens.com test, the examining attorney must refuse registration on the Principal Register under Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051, 1052, and 1127, on the ground that the mark is not used on separate "goods in trade." In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19. The applicant may respond to the refusal by submitting evidence as to the factors under the Lens.com test.
For example, with regard to the first factor, an applicant may show that its non-syndicated columns are not simply a conduit or necessary tool useful only in connection with obtaining or navigating the main publication in which the columns or sections appear. See In re The N.Y. Times Co., 2023 USPQ2d 392, at *21 ("Applicant’s columns [were not] akin to an instructional manual or brochure describing to the reader how to use or navigate the entirety of The New York Times print edition."); (Applicant’s columns were not akin to "an annual investment report . . . [that] is a common and necessary adjunct to the rendering of applicant’s investment management and research services." (quoting In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1162 (TTAB 2013))).
As to the second factor, relevant evidence to show that the column or section has a viable or separate existence apart from the main publication as a whole may include evidence showing that consumers separately seek out the columns or sections apart from the main publication, such as internet search engine results showing that the applicant’s column or section may be retrieved by searching the column’s or section’s name. See id. at *21-23. Such evidence may be probative of consumer perception and consumer experience that the column or section possesses a viable existence apart from the main publication, as it shows that consumers are likely to perceive the name of each column or section as distinct from the main publication as a whole. Id.
Regarding the third factor, relevant evidence to show that a column or section has independent value apart from the main publication also may include the internet search engine evidence discussed in the second factor, as such evidence may show "readers recognize the columns as separate goods to such a degree that they may be searchable by name and retrieve multiple results." Id. at *24-25. Such internet search engine results show that "the utility of the column is more than just a section" within the main publication, and that consumers may look for and search for the name of the column to separately read the content for that column. Id. at *24.
Prior to In re The New York Times Co., marks that identified non-syndicated columns or sections of printed publications, downloadable publications, or publications recorded on electronic media were registrable under §2(f), 15 U.S.C. §1052(f), with sufficient evidence or, if the mark had not yet acquired distinctiveness, were registrable on the Supplemental Register. Under In re The New York Times Co., if the evidence of record establishes that an applicant’s non-syndicated column or section of a printed publication, downloadable publication, or publication recorded on electronic media comprises "goods in trade" under the Lens.com test, the mark is registrable on the Principal Register without resort to §2(f). If the evidence does not establish that it is used on "goods in trade" under the Lens.com test, registration may no longer be sought on the Principal Register under §2(f) or on the Supplemental Register. TMEP §1202.06(b). Accordingly, if a mark for a non-syndicated column or section of a printed publication, downloadable publication, or publication recorded on electronic media is refused on the ground that the mark is not used on separate "goods in trade," the examining attorney must not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register.
Because a refusal to register a mark that identifies a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media is based on whether the column or section is separately sold, syndicated, or offered for syndication, or is non-syndicated and considered "goods in trade" under the test in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1382, 103 USPQ2d 1672, 1676 (Fed. Cir. 2012), the issue ordinarily does not arise in an intent-to-use application under Trademark Act §1(b), 15 U.S.C. §1051(b), until the applicant has filed an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ). See In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19 & n.20, *20 (TTAB 2023). However, if the identification of goods suggests that the mark is intended to be used to identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication, the first Office action should include an advisory that registration may later be refused on the ground that the proposed mark is not used on separate "goods in trade." See TMEP §1202.07(a)(ii) regarding applying the Lens.com test to determine if an applicant’s goods potentially are "goods in trade." This is done strictly as a courtesy. If the applicant is not advised about this potential ground for refusal prior to the filing of the allegation of use, the USPTO is not precluded from refusing registration on this basis.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to refuse registration because the mark is not used on separate "goods in trade" where the record indicates that the mark will identify a column or section of a printed publication, a downloadable publication, or a publication recorded on electronic media that is not separately sold, syndicated, or offered for syndication and the evidence of record fails to establish the applicant’s goods as "goods in trade" under the Lens.com test. See In re The N.Y. Times Co., 2023 USPQ2d 392, at *18-19; TMEP §1202.07(a)(ii); cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
Providing an online non-downloadable publication is considered a service rather than a good. Therefore, refusal of registration on the ground that the proposed mark is not used on "goods in trade" is inappropriate. An online non-downloadable column or section can be accessed directly and can exist independent of any single publication. See Ludden v. Metro Weekly, 8 F. Supp. 2d 7, 14, 47 USPQ2d 1087, 1093 (D.D.C. 1998). Therefore, a mark used in connection with the service of providing an online non-downloadable column or section is registrable on the Principal Register without a claim of acquired distinctiveness under Trademark Act §2(f), 15 U.S.C. §1052(f), if registration is not barred by other sections of the Act.
The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) ("the title of a single book cannot serve as a source identifier"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958) ("A book title . . . identifies a specific literary work . . . and is not associated in the public mind with the publisher, printer or bookseller"); In re MCDM Prods., LLC, 2022 USPQ2d 227, at *4-10 (TTAB 2022) (holding the title of a role-playing game book manual unregistrable as the title of a single work); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (holding the title of a live theater production unregistrable as the title of a single work); In re Hal Leonard Publ'g Corp., 15 USPQ2d 1574 (TTAB 1990) (holding INSTANT KEYBOARD, as used on music instruction books, unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (holding the title of single phonograph record unregistrable as the title of a single work).
As noted in In re Cooper, there is a compelling reason why the name or title of a book cannot be a trademark, which stems from copyright law. Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name. G. & C. Merriam Co. v. Syndicate Publ’g Co., 237 U.S. 618, 622 (1915); In re Cooper, 254 F.2d at 616, 117 USPQ at 400; Mattel, Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1144 (TTAB 2011). Moreover, if the work sought to be registered is not copyrighted, the public may copy it at once and would be as clearly entitled to call it by its name. In re Cooper, 254 F.2d at 616, 117 USPQ at 400.
See TMEP §1301.02(d) regarding the titles of radio and television programs.
When a title, or a portion of a title, of a single creative work appears in a composite mark with registrable matter, the title must be disclaimed, if otherwise appropriate, as an unregistrable component of the mark, unless the evidence shows use of the title on a series of creative works. See TMEP §1213.03(a) regarding disclaimer of unregistrable components.
Single creative works include works in which the content does not change, whether that work is in printed, recorded, or electronic form. Materials such as books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs, and films are usually single creative works.
A single creative work provided in different formats is still considered a single creative work. See, e.g., In re MCDM Prods., LLC, 2022 USPQ2d 227, at *8-9 (TTAB 2022) (holding STRONGHOLDS & FOLLOWERS the title of a single work for role-playing game book manuals offered in print and electronic formats); Mattel, Inc. v. Brainy Baby, Co., 101 USPQ2d 1140, 1141, 1144 (TTAB 2011) (holding LAUGH & LEARN with design the title of a single creative work for educational materials provided in VHS and DVD formats); In re Appleby, 159 USPQ 126, 126, 127 n.1 (TTAB 1968) (holding HYNO-SMOKE the title of a single creative work for phonograph records and albums provided in English and Spanish).
Creative works that are serialized, i.e., the mark identifies the entire work but the work is issued in sections or chapters, are still considered single creative works.
A theatrical performance is also a single creative work, because the content of the play, musical, opera, or similar production does not significantly change from one performance to another. In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) .
A cornerstone was considered a single creative work in an application for registration of FREEDOM STONE for "building stones used as landmarks or cornerstones," where the record showed that the proposed mark would identify only one building stone used as a landmark or cornerstone, to serve as the cornerstone for the Freedom Tower that is to be erected at the World Trade Center site in New York City. In re Innovative Cos., 88 USPQ2d 1095, 1102 (TTAB 2008) .
Generally, any creative work will not be considered a single creative work if evidence exists that it is part of a series (e.g., the work is labeled "volume 1," "part 1," or "book 1") or is a type of work in which the content changes with each issue or performance. For example, single creative works do not include periodically issued publications, such as magazines, newsletters, comic books, comic strips, guide books, and printed classroom materials, because the content of these works changes with each issue.
A book with a second or subsequent edition in which the content changes significantly is not regarded as a single creative work. For example, a statement on the jacket cover that a cookbook is a "new and revised" version would indicate that it includes significant revisions. However, a new edition issued to correct typographical errors or that makes only minor changes is not considered to be a new work. Live performances by musical bands, television and radio series, and educational seminars are presumed to change with each presentation and, therefore, are not single creative works.
Computer software, computer games, coloring books, and activity books are not treated as single creative works.
The examining attorney must determine whether changes in content are significant based on any evidence in the application or record. The examining attorney may conduct additional research using the applicant’s website, Internet search engines, or Nexis® databases (and enter a Note to the File in the record, if appropriate). In addition, the examining attorney may issue a request for information under 37 C.F.R. §2.61(b).
The name of a series of books or other creative works may be registrable if it serves to identify and distinguish the source of the goods. An applicant must submit evidence that the title is used on at least two different creative works. In re Arnold, 105 USPQ2d 1953, 1956 (TTAB 2013) . A series is not established when only the format of the work is changed, that is, the same title used on a printed version of a book and a recorded version does not establish a series. See Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1143 (TTAB 2011) (finding that a program recorded on both a VHS tape and a DVD were the same creative work, and that the addition of minor enhancements in the DVD did not transform this single work into a series). Likewise, use of the title on unabridged and abridged versions of the same work, or on collateral goods such as posters, mugs, bags, or t-shirts does not establish a series. Similarly, minimal variations of the same theatrical performance do not create a series. See In re Posthuma, 45 USPQ2d 2011, 2014 (TTAB 1998) .
For example, if an application for the mark HOW TO RETIRE EARLY for "books" is refused because the specimen shows the mark used on a single creative work, the applicant may submit copies of other book covers showing use of the mark HOW TO RETIRE EARLY and any additional evidence to establish that the book is published each year with different content. It is not necessary to show that the mark was used on the other works in the series prior to the filing date of the application or the allegation of use. However, evidence that the applicant intends to use the mark on a series is insufficient.
A portion of the title of any single creative work is registrable only if the applicant can show that the portion of the title meets the following criteria:
When registration is sought for a portion of a title, the mark must be used as a separable element on the specimen. The examining attorney should consider the size, type font, color, and any separation between the mark and the rest of the title when making this determination. In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) ("[T]he words THE MAGIC SCHOOL BUS are prominently displayed on the books' covers, and are in a larger, bolder style of type and different color from the remainder of each title. Moreover, the words appear on a separate line above the remainder of each title."). If the portion of the title sought to be registered is not separable, the examining attorney must refuse registration on the ground that the mark is not a substantially exact representation of the mark as it appears on the specimen. See TMEP §807.12(d).
An applicant may establish that the portion of the title of a creative work is used on a series by submitting more than one book cover or CD cover with the mark used in all the titles. For example, if the mark on the drawing is "THE LITTLE ENGINE" and on the book it appears as "THE LITTLE ENGINE THAT WENT TO THE FAIR," registration should be refused because the mark is a portion of a title of a single work. See In re Nat’l Council Books, Inc., 121 USPQ 198, 199 (TTAB 1959) (finding "NATIONAL" to be a portion of the title "NATIONAL GARDEN BOOK"). To establish use on a series, the applicant may submit additional book covers showing use of, e.g., "THE LITTLE ENGINE GOES TO SCHOOL," and "THE LITTLE ENGINE AND THE BIG RED CABOOSE."
When a mark is used merely as a portion of the title of a creative work, the applicant has a heavier burden in establishing that the portion for which registration is sought serves as a trademark for the goods. The mere use of the same words in more than one book title is insufficient to establish the words as a mark for a series. The applicant must show that the public perceives the portion sought to be registered as a mark for the series. In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) (holding THE MAGIC SCHOOL BUS used as a portion of the book titles in "THE MAGIC SCHOOL BUS AT THE WATERWORKS" and "THE MAGIC SCHOOL BUS INSIDE THE EARTH," functions as a mark for a series, because the record contained evidence of repeated use of the designation displayed prominently on book covers, as well as evidence that applicant promoted THE MAGIC SCHOOL BUS as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).
Identification Need Not Reflect Use on a Series. The identification of goods/services need not reflect that the applicant is using the title on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.
Creative Works in a List of Goods or Services. A refusal of registration on the ground that the mark merely identifies the title of a single creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information, or if the examining attorney learns from another source, that the mark identifies the title of a single creative work, the examining attorney must issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).
Example: An application for "printed newspapers, printed books in the field of finance, pencils, and printed coloring books" would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified the title of the "printed books in the field of finance." The use of the same mark on other non-creative matter such as the pencils and coloring books does not overcome the refusal.
The issue of whether a proposed mark is the title of a single creative work usually is tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen with an allegation of use under §1(c) or §1(d) of the Act, 15 U.S.C. §1051(c) or (d).
However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark is the title of a single creative work, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark constitutes the title of a single work, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify the title of a single work. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application).
Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953, 1957-60 (TTAB 2013) ; In re First Draft, Inc. 76 USPQ2d 1183, 1190 (TTAB 2005) ; In re Peter Spirer, 225 USPQ 693, 695 (TTAB 1985) . Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.
However, the name of the author or performer may be registered if:
In re Arnold, 105 USPQ2d at 1958.
If the applicant cannot show a series, or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).
See also TMEP §1301.02(b) regarding personal names as service marks.
In an application seeking registration of an author’s or performer’s name, the applicant must provide evidence that the mark appears on at least two different works. Such evidence could include copies of multiple book covers or multiple CD covers that show the name sought to be registered. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983). A showing of the same work available in different media, i.e., the same work in both printed and/or recorded or downloadable format, does not establish a series.
The identification of goods need not reflect that the applicant is using the name on a series of works (either written or recorded). It is sufficient that the record contains the evidence of a series.
The use of the author’s or performer’s name on a series of works does not, in itself, establish that the name functions as a mark. The record must also show that the name serves as more than a designation of the writer or performer, i.e. , that it also serves to identify the source of the series. See In re Arnold, 105 USPQ2d 1953, 1959-60 (TTAB 2013) (holding BLATANCY fails to function as a mark because it merely identifies the name of a performer featured on applicant’s musical recordings, and finding the evidence relating to control over the mark and the nature and quality of the goods conflicting and of uncertain meaning); In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) (holding pseudonym FERN MICHAELS identifies only the author and does not function as a mark to identify and distinguish a series of fictional books because the "evidence of promotion" was "indirect and rather scant," despite applicant’s showing that the name had been used as an author's name for 30 years; that 67 separate books had been published under the name, and approximately 6 million copies had been sold; that the book jackets listed the titles of other works by Fern Michaels and promoted her as a bestselling author; that the author had been inducted into the New Jersey Literary Hall of Fame; and that there was a www.fernmichaels.com website); In re Chicago Reader Inc., 12 USPQ2d 1079, 1080 (TTAB 1989) (holding CECIL ADAMS, used on the specimen as a byline and as part of the author’s address appearing at the end of a column, merely identifies the author and does not function as a trademark for a newspaper column).
A showing that the name functions as a source identifier may be made by submitting evidence of either: (1) promotion and recognition of the name as a source indicator for the series (see TMEP §1202.09(a)(ii)(A)); or (2) the author’s or performer’s control over the name and quality of his or her works in the series (see TMEP §1202.09(a)(ii)(B)). In re Arnold, 105 USPQ2d at 1958.
To show that the name of an author or performing artist has been promoted and is recognized as indicating the source of a series of written works, the applicant could submit copies of advertising that promotes the name as the source of a series, copies of third-party reviews showing others’ use of the name to refer to a series of works, or evidence showing the name used on a website associated with the series of works. See In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005) , citing In re Scholastic Inc., 23 USPQ2d 1774, 1777 (TTAB 1992) (holding THE MAGIC SCHOOL BUS functions as a mark for a series of books, where the record contained evidence of use of the designation displayed prominently on many different book covers, as well as evidence that applicant promoted the term as a series title, that others used the designation in book reviews to refer to a series of books, and that purchasers recognized the designation as indicating the source of a series of books).
Alternatively, an applicant may show that the name of an author or performing artist functions as a source indicator by submitting documentary evidence that the author/performer controls the quality of his or her distributed works and controls the use of his or her name. Such evidence would include license agreements and other documentary or contractual evidence. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983) (holding the name of the musical group ABBA functions as a mark for sound recordings where a license agreement showed that the owner of the mark, ABBA, controlled the quality of the goods, and other contractual evidence showed that the owner also controlled the use of the name of the group).
In In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005), the Board found that the applicant failed to meet the Polar Music test, noting that:
[W]e have neither any evidence bearing on [the question of applicant’s control over the quality of the goods] nor even any representations by counsel regarding such matters. This is in stark contrast to Polar Music, wherein there was detailed information and documentary (i.e., contractual) evidence regarding the relationship between the performing group ABBA and its "corporate entity," as well as evidence of the control such corporation maintained in dealings with a manufacturer and seller of its recordings in the United States.
If the applicant maintains control over the quality of the goods because the goods are published or recorded directly under the applicant’s control, the applicant may submit a verified statement that "the applicant publishes or produces the goods and controls their quality." In re Arnold, 105 USPQ2d 1953, 1958 (TTAB 2013) .
The issue of whether a proposed mark identifies only an author or performing artist is usually tied to use of the mark, as evidenced by the specimen. Therefore, generally, no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d).
In a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only an author or performing artist, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only an author or performing artist, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record, even without a specimen, reflects that the proposed mark identifies only an author or performing artist. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen based, in a §66(a) application).
An artist’s name or pseudonym affixed to an original work of art may be registered on the Principal Register without a showing that the name identifies a series. Original works of art includes paintings, murals, sculptures, statues, jewelry, and like works that the artist personally creates. In In re Wood, 217 USPQ 1345, 1350 (TTAB 1983), the Board held that the pseudonym YSABELLA affixed to an original work of art functioned as a mark. The Board has expressly limited this holding to cases involving original works of art, stating in Wood that "[l]est we be accused of painting with too broad a brush, we hold only that an artist’s name affixed to an original work of art may be registered as a mark and that here applicant’s name, as evidenced by some of the specimens of record [the signature of the artist on a work of art], functions as a trademark for the goods set forth in the application." In In re First Draft, 76 USPQ2d 1183, 1190 (TTAB 2005) , the Board again stated that " Wood is limited in its application to cases involving original works of art and there is nothing to indicate that the panel deciding that case considered novels to be encompassed by the phrase original works of art."
Marks that merely identify a character in a creative work, whether used in a series or in a single work, are not registrable. In re Scholastic Inc., 223 USPQ 431, 431 (TTAB 1984) (holding THE LITTLES, used in the title of each book in a series of children's books, does not function as a mark where it merely identifies the main characters in the books). Cf. In re Caserta, 46 USPQ2d 1088, 1090-91 (TTAB 1998) (holding FURR-BALL FURCANIA, used as the principal character in a single children's book, does not function as a mark even though the character's name appeared on the cover and every page of the story); In re Frederick Warne & Co., 218 USPQ 345, 347-48 (TTAB 1983) (holding an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).
To overcome a refusal of registration on the ground that the proposed mark merely identifies a character in a creative work, the applicant may submit evidence that the character name does not merely identify the character in the work. For example, the applicant may submit evidence showing use of the character name as a mark on the spine of the book, or on displays associated with the goods, in a manner that would be perceived as a mark.
A refusal of registration on the ground that the mark merely identifies a character in a creative work can be made regardless of whether the creative work is the sole item in the identification of goods/services or is listed with other items. If the record contains information or if the examining attorney learns from another source that the mark identifies a character in a creative work and there are multiple items in the identification, the examining attorney should issue a partial refusal as to the relevant goods/services. A partial refusal is a refusal that applies only to certain goods/services, or to certain classes. See TMEP §718.02(a).
Example: An application for "printed children’s books, pencils, and printed coloring books" would be partially refused if the examining attorney determined, either from the application or from another source, that the mark identified a character in the children's books. The use of the same mark on other non-creative matter such as the pencils and printed coloring books does not overcome the refusal.
The issue of whether a proposed mark identifies only the name or design of a particular character is tied to use of the mark, as evidenced by the specimen. Therefore, unless the record, even without a specimen, reflects that the proposed mark identifies only the name or design of a character, generally no refusal will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted specimen(s) with an allegation of use under §1(c) or §1(d) of the Trademark Act, 15 U.S.C. §1051(c) or (d). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the proposed mark identifies only a particular character, the potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis. In cases where the record indicates that the mark identifies only the name or design of a character, the examining attorney may make the refusal prior to the filing of the allegation of use.
In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for examining attorneys to issue the refusal where the record indicates that the mark will identify only the name or design of a particular character. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal, which is otherwise typically specimen-based, in a §66(a) application).
See TMEP §1301.02(b) regarding names of characters or personal names as service marks.
Common geometric shapes and background designs that are not sufficiently distinctive to create a commercial impression separate from the word and/or design marks with which they are used, are not regarded as indicators of origin absent evidence of distinctiveness of the design alone. See In re Benetton Group S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) ; In re Anton/Bauer, Inc., 7 USPQ2d 1380, 1381 (TTAB 1988) ; In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985) ; In re Haggar Co., 217 USPQ 81, 83-84 (TTAB 1982) . As stated in In re Chem. Dynamics, Inc., 839 F.2d 1569, 1570, 5 USPQ2d 1828, 1829 (Fed. Cir. 1988) (citations omitted), "'[a] background design which is always used in connection with word marks must create a commercial impression on buyers separate and apart from the word marks for the design to be protectible as a separate mark.' In deciding whether the design background of a word mark may be separately registered, the essential question is whether or not the background material is or is not inherently distinctive…. If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential."
An applicant may respond to a refusal to register an application for a common geometric shape or background design by submitting evidence that the subject matter has acquired distinctiveness under §2(f) of the Trademark Act, 15 U.S.C. §1052(f). The examining attorney should scrutinize any submission that asserts distinctiveness solely on the basis of a statement of substantially exclusive and continuous use for five years to determine whether it truly establishes that the subject matter is perceived as a trademark by the purchasing public. The examining attorney may continue to refuse registration if he or she believes that the applicant’s assertion does not establish that the matter is perceived as a trademark. The applicant may submit additional evidence to establish distinctiveness. See TMEP §§1212–1212.10.
In the following cases, the evidence of distinctiveness was insufficient: Benetton, 48 USPQ2d at 1217 (holding green rectangular background design not inherently distinctive; evidence of acquired distinctiveness insufficient); Anton/Bauer, 7 USPQ2d at 1383 (holding parallelogram designs used as background for word marks not inherently distinctive; evidence of record insufficient to establish acquired distinctiveness pursuant to §2(f)); In re Kerr-McGee Corp., 190 USPQ 204, 207 (TTAB 1976) (affirming refusals to register escutcheon design used as a frame or border for words, under §2(f)).
In the following cases, the evidence of distinctiveness was sufficient: In re Schenectady Varnish Co., 280 F.2d 169, 171, 126 USPQ 395, 397 (C.C.P.A. 1960) (finding evidence of record sufficient to show acquired distinctiveness of the design alone as a trademark for synthetic resins where use of applicant’s design of a cloud and a lightning flash was always used as a background for the word "SCHENECTADY" ); In re Raytheon Co., 202 USPQ 317, 319-20 (TTAB 1979) (finding light-colored oval within black rectangular carrier not inherently distinctive; evidence of record sufficient to establish acquired distinctiveness).
Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which such variety is known to the U.S. consumer. See, e.g., In re Pennington Seed Co., 466 F.3d 1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006). These names can consist of a numeric or alphanumeric code or can be a "fancy" (arbitrary) name. The terms "varietal" and "cultivar" may have slight semantic differences but pose indistinguishable issues and are treated identically for trademark purposes.
Subspecies are types of a particular species of plant or seed that are members of a particular genus. For example, all maple trees are in the genus Acer. The sugar maple species is known as Acer saccharum, while the red maple species is called Acer rubrum. In turn, these species have been subdivided into various cultivated varieties that are developed commercially and given varietal or cultivar names that are known to U.S consumers.
A varietal or cultivar name is used in a plant patent to identify the variety. Thus, even if the name was originally arbitrary, it "describe[s] to the public a [plant] of a particular sort, not a [plant] from a particular [source]." Dixie Rose Nursery v. Coe, 131 F.2d 446, 447, 55 USPQ 315, 316 (D.C. Cir. 1942). It is against public policy for any one supplier to retain exclusivity in a patented variety of plant, or the name of a variety, once its patent expires. Id.; accord Pennington Seed, 80 USPQ2d at 1762.
Market realities and lack of laws concerning the registration of varietal and cultivar names have created a number of problems in this area. Some varietal names are not attractive or easy to remember by the public. As a result, many arbitrary terms are used as varietal names. Problems arise when trademark registration is sought for varietal names, when arbitrary varietal names are thought of as being trademarks by the public, and when terms intended as trademarks by plant breeders become generic through public use. These problems make this a difficult area for the examining attorney in terms of gathering credible evidence and knowing when to make refusals.
Whenever an application is filed to register a mark containing wording for live plants, agricultural seeds, fresh fruits, or fresh vegetables, a search using Internet search engines does not by itself suffice to assess whether the mark iis a varietal or cultivar. Unless a Note to the File in the record indicates that a separate search by the Trademark Law Library was conducted, the examining attorney must submit a request to the Trademark Law Library to undertake an independent investigation of any evidence that would support a refusal to register, using sources of evidence that are appropriate for the particular goods specified in the application (e.g., laboratories and repositories of the United States Department of Agriculture, plant patent information from the USPTO, a variety name search of plants certified under the Plant Variety Protection Act listed at www.ars-grin.gov/npgs/searchgrin.html ). Before any mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables is approved for publication, a Note to the File must be added to the record indicating that the results of the varietal search were reviewed. In addition, the examining attorney also may inquire of the applicant whether the term has ever been used as a varietal name, and whether such name has been used in connection with a plant patent, a utility patent, or a certificate for plant-variety protection. See 37 C.F.R. §2.61(b).
If the examining attorney determines that wording sought to be registered as a mark for live plants, agricultural seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name, then the examining attorney must refuse registration, or require a disclaimer, on the ground that the matter is the varietal name of the goods and does not function as a trademark under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127. See Pennington Seed, 80 USPQ2d at 1761-62 (upholding the USPTO’s long-standing precedent and policy of treating varietal names as generic, and affirming refusal to register REBEL for grass seed because it is the varietal name for the grass seed as evidenced by its designation as the varietal name in applicant’s plant variety protection certificate); Dixie Rose Nursery, 55 USPQ at 316 (holding TEXAS CENTENNIAL, although originally arbitrary, has become the varietal name for a type of rose; In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1035 (TTAB 1979) (affirming the refusal to register COMMANDER YORK for apple trees because it is the varietal name for the trees as evidenced by use in applicant’s catalogue); In re Farmer Seed & Nursery Co., 137 USPQ 231, 231-32 (TTAB 1963) (upholding the refusal to register CHIEF BEMIDJI as a trademark because it is the varietal name for a strawberry plant and noting that large expenditures of money does not elevate the term to a trademark; In re Cohn Bodger & Sons Co., 122 USPQ 345, 346 (TTAB 1959) (holding BLUE LUSTRE merely a varietal name for petunia seeds as evidenced by applicant’s catalogs).
Likewise, if the mark identifies the prominent portion of a varietal name, it must be refused. In re Delta & Pine Land Co., 26 USPQ2d 1157 (TTAB 1993) (affirming the refusal to register DELTAPINE, which was a portion of the varietal names Deltapine 50, Deltapine 20, Deltapine 105 and Deltapine 506).
Scent. The scent of a product may be registrable if it is used in a nonfunctional manner. See In re Clarke, 17 USPQ2d 1238, 1239-40 (TTAB 1990) (holding that the scent of plumeria blossoms functioned as a mark for "sewing thread and embroidery yarn"). Scents that serve a utilitarian purpose, such as the scent of perfume or an air freshener, are functional and not registrable. See TMEP §§1202.02(a)-1202.02(a)(viii) regarding functionality. When a scent is not functional, it may be registered on the Principal Register under §2(f), or on the Supplemental Register if appropriate. The amount of evidence required to establish that a scent or fragrance functions as a mark is substantial. See In re Pohl-Boskamp GmbH & Co., 106 USPQ2d 1042, 1052 (TTAB 2013) (finding that peppermint scent mark for "pharmaceutical formulations of nitroglycerin" failed to function as a mark and noting the insufficiency of applicant’s evidence of acquired distinctiveness in light of evidence that the use of peppermint scent by others in the relevant marketplace (i.e., pharmaceuticals) tends to show that such scents are more likely to be perceived as attributes of ingestible products than as indicators of source)); cf. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (requiring concrete evidence that the mark is perceived as a mark to establish distinctiveness).
Flavor. Just as with a scent or fragrance, a flavor can never be inherently distinctive because it is generally seen as a characteristic of the goods. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1048 (finding that peppermint flavor mark for "pharmaceutical formulations of nitroglycerin" failed to function as a mark); In re N.V. Organon, 79 USPQ2d 1639 (TTAB 2006) (affirming refusal to register "an orange flavor" for "pharmaceuticals for human use, namely, antidepressants in quick-dissolving tablets and pills," on the grounds that the proposed mark was functional under §2(e)(5) and failed to function as a mark within the meaning of §§1, 2, and 45 of the Trademark Act). The Board has observed that it is unclear how a flavor could function as a source indicator because flavor or taste generally performs a utilitarian function and consumers generally have no access to a product’s flavor or taste prior to purchase. Id. at 1650-51. Thus, an application to register a flavor "requires a substantial showing of acquired distinctiveness." In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1051-52 (noting the insufficiency of applicant’s evidence of acquired distinctiveness in light of evidence that the use of peppermint flavor by others in the relevant marketplace tends to show that such flavors are more likely to be perceived as attributes of ingestible products than as indicators of source); In re N.V. Organon, 79 USPQ2d at 1650.
See TMEP §807.09 regarding the requirements for submitting applications for non-visual marks.
A hologram used in varying forms does not function as a mark in the absence of evidence that consumers would perceive it as a trademark. See In re Upper Deck Co., 59 USPQ2d 1688, 1692-93 (TTAB 2001), where the Board held that a hologram used on trading cards in varying shapes, sizes, and positions did not function as a mark, because the record showed that other companies used holograms on trading cards and other products as anti-counterfeiting devices, and there was no evidence that the public would perceive applicant’s hologram as an indicator of source. The Board noted that "the common use of holograms for non-trademark purposes means that consumers would be less likely to perceive applicant’s uses of holograms as trademarks." 59 USPQ2d at 1693.
Therefore, in the absence of evidence of consumer recognition as a mark, the examining attorney should refuse registration on the ground that the hologram does not function as a mark, under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127.
Generally, if a hologram has two or more views, the examining attorney should also refuse registration under §§1 and 45 of the Trademark Act, 15 U.S.C. §§1051 and 1127, on the ground that the application seeks registration of more than one mark. In re Upper Deck, 59 USPQ2d at 1690-91. See TMEP §807.01.
A sound mark identifies and distinguishes a product or service through audio rather than visual means. Sound marks function as source indicators when they "assume a definitive shape or arrangement" and "create in the hearer’s mind an association of the sound" with a good or service. In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978) . Thus, sounds may be registered on the Principal Register when they are "arbitrary, unique or distinctive and can be used in a manner so as to attach to the mind of the listener and be awakened on later hearing in a way that would indicate for the listener that a particular product or service was coming from a particular, even if anonymous, source." In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009) . Examples of sound marks include: (1) a series of tones or musical notes, with or without words; and (2) wording accompanied by music.
There is, however, a difference between unique, different, or distinctive sounds and those that resemble or imitate "commonplace" sounds or those to which listeners have been exposed under different circumstances, which must be shown to have acquired distinctiveness. Gen. Electric Broad. 199 USPQ at 563 (TTAB 1978). Examples of "commonplace" sound marks include goods that make the sound in their normal course of operation (e.g., alarm clocks, appliances that include audible alarms or signals, telephones, and personal security alarms). Therefore, sound marks for goods that make the sound in their normal course of operation can be registered only on a showing of acquired distinctiveness under §2(f). In re Powermat Inc., 105 USPQ2d 1789, 1793 (TTAB 2013) (finding battery chargers that emit "chirp" sounds slightly increasing and decreasing in pitch not inherently distinctive, and applicant’s advertising only relevant in a showing of acquired distinctiveness); Nextel Commc'ns, Inc. v. Motorola, Inc., 91 USPQ2d 1393 (TTAB 2009) (holding cellular telephones that emit a "chirp" sound fall into the category of goods that make the sound in their normal course of operation); Vertex, 89 USPQ2d at 1700, 1702 (holding personal security alarm clock products that emit a sound pulse fall into the category of goods that make sound in the normal course of operation).
See TMEP §807.09 regarding the requirements for submitting applications for sound marks and §904.03(f) regarding specimens for sound marks.
Model designations appear in connection with a wide variety of products, such as retaining rings, hand tools, and pens, to identify a specific style, type, or design of a product within a particular line of goods. See In re Petersen Mfg. Co., 229 USPQ 466 (TTAB 1986) (noting that the following alphanumeric designations served as model numbers on the specimens, but finding the evidence of acquired distinctiveness under §2(f) sufficient for registration: 18R for a C clamp; 6LN for a locking plier with elongated jaw; 9LN for a locking plier with elongated jaw; 7CR for a locking plier with curved jaw; 6R for a C clamp; 20R for a chain clamp; 10CR for a locking plier with curved jaw; 7R for a locking plier with straight jaw; 10WR for a locking plier with wire cutter; 7WR for a locking plier with wire cutter; 5WR for a locking plier with wire cutter; RR for a locking specialty tool, namely, a pinch-off tool; 10R for a locking plier with straight jaw; 9R for a locking specialty tool, namely, a welding clamp; 8R for locking specialty tools, namely, metal clamping tools; and 11R for a C clamp); In re Waldes Kohinoor, Inc., 124 USPQ 471 (TTAB 1960) (holding that 5131, 5000, and 5100 for retaining rings functioned only to differentiate one type of the applicant’s retaining rings from its other types and did not function as a trademark to distinguish the applicant’s goods from those of others); Ex parte Esterbrook Pen Co., 109 USPQ 368 (Comm’r Pats. 1956) (holding that 2668 for pen points did not function as a mark because it was merely a style number for a particular pen point used to differentiate one pen point from other points in the product line).
Model designations also are commonly used to distinguish between different types of automobile parts within a single product line. See In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (holding that the following alphanumeric designations used in connection with vehicle parts functioned only as part numbers and not as trademarks: 5-469X; 5-438X; 5-510X; 5-515X; 5-407X; 5-279X; and 5-281X). In addition, model designations may serve the purpose of providing users with product compatibility information between goods and parts, accessories, and/or fittings for the goods. See In re Otis Eng’g Corp., 218 USPQ 959, 960 (TTAB 1983) (noting that the fact that various pieces of applicant’s "X" equipment for oil wells are compatible with each other tends to support the position that "X" is a style or model designation, but finding that the specimens, advertising brochures, and affidavits when considered together demonstrate that "X" also functions as a trademark). They also facilitate ordering and tracking of goods. Id. (noting that the use of the same designation on various goods that work together would enable purchasers to order compatible equipment).
Grade designations are used to denote that a product has a certain level of quality within a defined range. They may also indicate that a product has a certain classification, size, weight, type, degree, or mode of manufacturing. Mere grade designations are often used by competitors within an industry, or by the general public, and do not indicate origin from a single source because their principal function is to provide information about the product to a consumer. See 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011). (Note: the use of a grade designation in the context of a certification mark is not discussed herein.)
For example, the fuel industry utilizes grade designations in the form of particular numbers to delineate different octane ratings of fuel. See In re Union Oil Co., 33 USPQ 43 (C.C.P.A. 1937) (affirming the decision of the Commissioner of Patents refusing to register 76 for gasoline because the term functioned merely as a grade or quality mark to indicate either the octane rating or the Baume gravity rating and did not indicate origin). Grade designations have also been used to signify the composition or strength of various types of steel. See Jones & Laughlin Steel Corp. v. Armco Steel Corp., 139 USPQ 132 (TTAB 1963) (holding that the terms 17-4PH and 17-7PH originally served only as a grade designation for stainless steel based on the composition of chromium and nickel, but finding the evidence of secondary meaning sufficient for registration). The United States Department of Agriculture (USDA) assigns grades in connection with butter to delineate between different quality levels based on flavor, aroma, and texture. See Agric. Mktg. Serv., U.S. Dep’t of Agric., How to Buy Butter (Feb. 1995), http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002487. The USDA also assigns grades to other food products, such as eggs, meat, and poultry. See Agric. Mktg. Serv., U.S. Dep’t of Agric., Egg-Grading Manual (July 2000), http://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3004502; Inspection & Grading of Meat and Poultry: What Are the Differences?, U.S. Dep’t of Agric. (Aug. 22, 2008), http://www.fsis.usda.gov/Fact_Sheets/Inspection_&_Grading/index.asp.
A trademark comprises a word, name, symbol, device, or combination thereof that is used to identify the goods of an applicant, to distinguish them from the goods of others, and to indicate the source of the goods. Trademark Act §§1-2, 45, 15 U.S.C §§1051 -1052, 1127; see TMEP §1202. Similar to a trademark, a model or grade designation is generally comprised of numbers or letters, or a combination thereof. However, the manner of use, and resulting commercial impression imparted by the matter, differentiate a mere model or grade designation from that of a trademark (or a dual-purpose mark that is both a model or grade designation and a trademark). While letters, numbers, or alphanumeric matter may serve as both a trademark and a model or grade designation, matter used merely as a model or grade designation serves only to differentiate between different products within a product line or delineate levels of quality, and does not indicate source. See Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 1576, 26 USPQ2d 1912, 1919 (Fed. Cir. 1993); Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748 (TTAB 1989); 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011).
Even though a model or grade designation seems "arbitrary" in the sense that the combination of letters, numbers, or both does not immediately describe the goods, it often does not function as a trademark. See Gilson LaLonde, supra, §2.03(4)(a). Where the model or grade designation fails to distinguish the applicant’s goods from those of others or to identify the applicant as the source, the proposed mark must be refused registration on the Principal Register under §§1, 2, and 45 for failure to function as a trademark. 15 U.S.C. §§1051 -1052, 1127. However, if the mark both identifies a model or grade designation and serves as a trademark, no failure-to-function refusal should issue. See Ex parte Eastman Kodak Co., 55 USPQ 361, 362 (Comm’r Pats. 1942) ("The fundamental question is not whether or not the mark as used by applicant serves to indicate grade or quality but rather whether it is or is not so used that purchasers and the public will recognize the mark as indicating the source of origin of the goods.").
In addition, the examining attorney must also consider whether the proposed mark is merely descriptive, or even generic. Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1). Grade designations often become synonymous with (and thus merely descriptive of) a classification, value, size, weight, type, degree, mode of manufacturing, or level of quality of the goods. And, more infrequently, model designations can be used in a merely descriptive manner. See Textron, Inc. v. Omark Indus., Inc., 208 USPQ 524, 527-28 (TTAB 1980) (holding that model numbers which have been used in the same manner by competitors for indicating the size of the saw chains as to pitch and gauge are merely descriptive and not registrable).
Determining whether a proposed mark is used merely as a model designation is a question of fact. See In re Petersen Mfg. Co., 229 USPQ 466 (TTAB 1986) (finding that purchasers recognized the designations as trademarks in addition to functioning as model designations based on the ex parte record presented). The factual finding focuses on whether the proposed mark, as used on the specimen (and any other evidence of record), also identifies the applicant as the source of the goods or distinguishes the applicant’s goods from the goods of others. Extrinsic evidence may also aid in determining whether the proposed mark functions as a source indicator. The following three considerations comprise guidelines for determining whether a proposed mark, as used on a specimen, serves merely as a model designation or whether it also functions as a source indicator.
The stylization of display refers to the visual presentation or "look" of a proposed mark on the specimen, and takes into consideration such elements as font style and color as well as design features. In some cases, the stylization creates an impression separate and apart from that of a model designation, thereby making the designation more likely to be perceived as a trademark. In analyzing stylization of display, the examining attorney should consider whether the font or stylization of lettering in the proposed mark is unusual or relatively ordinary, and should also consider the degree of stylization. Where the stylization is minimal, the proposed mark may be more likely to be perceived as merely a model designation.
Size refers to the relative dimension of the proposed mark. If the proposed mark appears large in relation to any other matter, it may immediately catch the eye and make the proposed mark the focal point on the specimen. Therefore, the proposed mark would be less likely to be perceived as a mere model designation. If the proposed mark is smaller than the other matter surrounding it, however, consumers would be more likely to perceive it as merely a model designation.
The physical location refers to the actual position of the proposed mark on a specimen. Although there is no prescribed location on a specimen where the proposed mark must be placed to qualify as a trademark, the physical location of matter on a specimen suggests how the mark would be perceived by consumers and whether such matter serves as a trademark or is merely a model designation. The display of a proposed mark in a prominent location on the goods themselves, or on the packaging or label, is a factor that may contribute to finding that it serves as a trademark. A proposed mark that appears in close proximity to generic or informational matter (such as the common or class name for the goods, net weight, bar code, or country of origin) is less likely to be perceived as a mark because it will be viewed together with the generic or informational matter as merely conveying information about the model of a particular product line.
A grade designation often indicates a standard that is common to producers or manufacturers within an industry. Determining whether a proposed mark is used merely as a grade designation is a question of fact. See In re Flintkote Co., 132 USPQ 295, 296 (TTAB 1961) (citing Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 USPQ 105 (C.C.P.A. 1956)); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011). Thus, the examining attorney must supplement consideration of the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), with independent research of the applicant’s and competitors’ websites, the Internet, and databases such as LexisNexis® to determine how the designation is used in the industry. Such research will assist in determining whether the proposed mark is used by others to convey a specific characteristic of the goods (such as value, size, type, degree, or level of quality) and, as such, has a publicly recognized meaning. For example, if the evidence shows that A, B, C, and D, or 1, 2, 3, and 4, are commonly used in an industry to represent a hierarchy of quality, a mark consisting of such a letter or number likely would not indicate source in any one producer or manufacturer. See Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D.N.Y. 1882) ("It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4, or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively. Why? Because the general signification and common use of these letters and figures are such, that no man is permitted to assign a personal and private meaning to that which has by long usage and universal acceptation acquired a public and generic meaning."); 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011).
Where extrinsic evidence shows that matter in the proposed mark is used by competitors or members of the public to convey the same type of designation of quality, the resulting commercial impression is merely that of a grade designation with no source-identifying capability. The examining attorney should also analyze the specimen using the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) to bolster a refusal based on a failure to function as a mark. A lack of extrinsic evidence of usage of the proposed mark as a grade designation does not necessarily foreclose a refusal, where the nature of applicant’s use and the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) indicate a grade designation.
To support a refusal to register a model designation for failure to function as a mark, the examining attorney must use the applicant’s specimen, along with any other relevant evidence in the application, such as the identification of goods and mark description. If available, the examining attorney should also provide additional evidence that shows that the proposed mark would be perceived merely as a model designation, such as consumers referring to the applicant’s proposed mark as a model or part number when ordering the goods. Evidence that other manufacturers use similar numbering systems to identify model numbers for their goods may be submitted to show that consumers are familiar with the use of alphanumeric designations as model numbers and are consequently less likely to perceive the applicant’s use of the mark as source indicating.
A refusal or requirement (such as a disclaimer requirement) on the basis that a mark comprises or includes a grade designation must be supported by relevant evidence. Where extrinsic evidence is available to show that a proposed grade designation is used by competitors within an industry and/or members of the public to convey the same meaning, the examining attorney must attach the evidence to the Office action and explain its relevance to the refusal. For example, evidence demonstrating that other manufacturers use the same or similar grading systems to identify quality levels of their own goods may be submitted with an explanation that such evidence shows that the proposed mark does not indicate origin from a single source. If no extrinsic evidence is available, the examining attorney must use the applicant’s specimen, along with any other relevant evidence of record, to support a grade designation refusal for failure to function as a mark. In such situations, the examining attorney must also issue a request for relevant information (such as fact sheets, instruction manuals, and/or advertisements depicting the applicant’s use of the proposed mark, and evidence of any industry use of this designation or similar designations) pursuant to 37 C.F.R. §2.61(b).
If the evidence shows that a proposed mark consists entirely of a mere model or grade designation, the examining attorney must refuse registration on the Principal Register under §§1, 2, and 45 because the proposed mark does not function as a trademark to identify and distinguish the applicant’s goods from those of others and indicate the source of the goods. 15 U.S.C. §§1051 -1052, 1127.
For such refusals, where appropriate, the examining attorney should advise the applicant of the various response options: (1) submitting a substitute specimen that shows the proposed mark being used as a trademark for the identified goods; (2) claiming acquired distinctiveness under §2(f) with actual evidence of distinctiveness that establishes recognition of the proposed mark as a trademark for the goods; or (3) amending the application to seek registration on the Supplemental Register. See Trademark Act §23, 15 U.S.C. §1091; In re Petersen Mfg. Co., 229 USPQ 466, 468 (TTAB 1986) (finding letter-number combinations registrable under §2(f) for locking hand tools and stating, "there is no question that such model designations can, through use and promotion, be perceived as marks indicating origin in addition to functioning as model designations."); 37 C.F.R. §2.59(a); TMEP §904.05.
For marks comprising grade designations, the examining attorney must determine whether to make an additional refusal on the grounds that the mark is also merely descriptive of the goods. Trademark Act §2(e)(1), 15 U.S.C. §§1052(e)(1). Grade designations can often become synonymous with (and thus merely descriptive of) a classification, value, size, weight, type, degree, mode of manufacturing, or level of quality of the goods. Grade designations that are also the generic name of the goods are not eligible for registration on the Principal Register under §2(f) or on the Supplemental Register because they are not capable of indicating the source of the goods and must remain available to identify the relevant characteristic possessed by goods meeting such criteria. In such cases, if the applicant responds by amending the application to seek registration on the Supplemental Register, the examining attorney must issue a generic refusal under §23. In the rare situation where the applicant is the sole user of a grade designation and where the mark appears capable, the applicant should be provided with the same response options identified above for applicable model designations.
Composite marks may comprise matter that is used as a model or grade designation in addition to other wording and/or design features. Such marks must be evaluated as a whole to determine whether they are registrable.
Terms used as model or grade designations that are combined with arbitrary and/or suggestive matter are generally not refused registration under Trademark Act §§1, 2, and 45, if the additional matter imparts trademark significance to the mark as a whole. Generally, no disclaimer of a portion that is a model designation need be required (unless there is evidence of descriptive or generic usage) because the composite mark creates a single unitary commercial impression and there is no need to preserve the availability of the applicant’s model designation for others. However, the portion of a mark that is a grade designation must generally be disclaimed in cases where there is evidence of descriptive or generic use, to clarify the availability of the grade designation for use by others in the industry. Standard USPTO disclaimer practices would apply in such cases, including considerations of unitariness. See TMEP §§1213-1213.08(d).
Terms used merely as model or grade designations that are combined with descriptive, generic, and/or informational matter are generally refused registration under Trademark Act §§1, 2, and 45 because this type of additional matter does not diminish the mark’s model or grade designation significance. In most instances involving model designations, claims of acquired distinctiveness under §2(f) and amendments to the Supplemental Register may be permissible. Additionally, in rare cases where there is no evidence of generic usage for grade designations, claims of acquired distinctiveness under §2(f) and amendments to the Supplemental Register may be permissible. In such cases, the examiner must consider standard USPTO disclaimer practice to determine whether a disclaimer of the generic and/or informational matter may be necessary. See TMEP §§1213-1213.08(d).
Occasionally, the specimen will show a possible model or grade designation that is not included on the drawing and thus, the mark on the drawing and specimen will appear to disagree. See TMEP §807.12(d). When it is unclear whether the additional matter is a model or grade designation, the examining attorney must refuse registration under §§1 and 45 on the ground that the specimen does not show the applied-for mark in use in commerce. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). If the matter is not part of the mark and is merely used as a model or grade designation, the applicant may respond to the refusal by submitting the following: (1) a statement that the matter is merely a model or grade designation and (2) evidence showing use of the proposed mark with other similar notations or evidence clearly showing that the matter is merely a model or grade designation. See 37 C.F.R. §2.61(b); In re Raychem Corp., 12 USPQ2d 1399, 1400 (TTAB 1989) (holding the mark TINEL-LOCK on the drawing to agree with the wording TR06AI-TINEL-LOCK-RING appearing on the specimen where the notation TR06AI was merely a part or stock number, as supported by a submitted brochure that explained that each letter and number in the notation represented a specific type, size, and feature of the part, and the term RING was generic for the goods); In re Sansui Elec. Co., 194 USPQ 202, 203 (TTAB 1977) (holding the marks "QSE" and "QSD" on the drawing to agree with the wording "QSE-4" and "QSD-4" appearing on the specimens, where the notation "4" was merely a model number and the additional specimens showed use of the mark with various changing model numbers used to designate successive generations of equipment). In the alternative, the applicant may provide a substitute specimen showing the proposed mark depicted on the drawing. See 37 C.F.R. §2.59(a); TMEP §904.05. In cases where the record clearly indicates that the notation on the specimen is a model or grade designation, no specimen refusal should issue. See In re Raychem Corp., 12 USPQ2d at 1400.
Generally, the failure-to-function refusal is a specimen-based refusal. TMEP §1202. In §1(b), 44, or 66(a) applications, marks that appear to be merely model designations (either wholly comprising the mark or used with descriptive/generic/informational matter) may be refused registration for failure to function as a mark only where the drawing and mark description are dispositive of the mark’s failure to function, or the record clearly and unequivocally indicates that the entire mark identifies only a model designation. Cf. In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (affirming a failure-to-function ornamentation refusal in a §66(a) application despite the lack of a specimen since the mark was decorative or ornamental on its face as depicted on the drawing page and described in the application). For those rare cases where a refusal issues in a §66(a) application, the examining attorney must not offer an amendment to the Supplemental Register. Applications filed under §66(a) are not eligible for registration on the Supplemental Register. 37 C.F.R. §§2.47(c), 2.75(c); TMEP §816.01; see also 15 U.S.C. §1141h(a)(4). Otherwise, because of the lack of specimen of use, a failure-to-function refusal is inappropriate.
If upon initial examination of a §1(b) application, an examining attorney must issue an Office action for other reasons, and the proposed mark appears to be used or intended to be used merely as a model designation, the examining attorney should include a model designation failure-to-function advisory as a courtesy to the applicant. See TMEP §1102.01. Regardless of whether an examining attorney issues an initial advisory before the applicant files an allegation of use, the examining attorney must issue a refusal based on failure to function as a mark after the allegation of use is filed, if supported by the evidence of record. Id.
The examining attorney must refuse registration based on a failure to function as a mark for a mark merely comprising a grade designation (or a grade designation with descriptive/generic/informational matter) in a §1(b), 44, or 66(a) application where the evidence shows the mark is used in the industry or by the public in such a way as to clearly and unequivocally show use merely to identify a specific quality or feature of the goods. For more information about evidence, see TMEP §1202.16(c)(i)(B). If the examining attorney can find no extrinsic evidence of such use, the procedures outlined for model designations in TMEP §1202.16(c)(v)(A) must be followed.
The term "universal symbol" refers to a design, icon, or image that is commonly used in an informational manner and conveys a widely recognized or readily understood meaning when displayed in its relevant context. See Webster’s New World College Dictionary 1356 (3rd ed. 1997) (defining "symbol" as "something that stands for, represents, or suggests another thing; esp., an object used to represent something abstract); id. at 1460 (defining "universal" as "used, intended to be used, or understood by all"). Universal symbols are typically available for use by anyone to quickly provide notice of a particular condition or to indicate a characteristic of an object or area. Thus, they appear in a variety of places, such as on road signs, near dangerous machinery, on medical apparatus, in hazardous locations, on product warning labels, or on materials connected with recycling activities. Usually, the context in which a universal symbol appears is crucial in determining the symbol’s significance.
Matter that is specifically protected by statute or registered as a mark should not be considered to be a universal symbol. See TMEP §1205. For example, certain symbols that have a widely recognized meaning, such as the Red Cross, are subject to specific statutory protections restricting their use and may be refused under various provisions of the Trademark Act. See TMEP §1205.01.
The following are examples of common universal symbols:
The recycling symbol typically designates materials that are recyclable or recycled, but may also indicate that goods or services involve recycling or are otherwise environmentally friendly. See, e.g., Recyclenow.com, Recycling Symbols Explained, https://www.recyclenow.com/recycling-knowledge/packaging-symbols-explained (accessed June 16, 2021).
The international radiation symbol indicates proximity to a source of radiation or radioactive materials. See, e.g., U.S. Dept. of Health & Human Servs., Examples of Radiation Signs and Symbols for Work Areas, Buildings, Transportation of Cargo, https://www.remm.hhs.gov/radsign.htm (accessed April 4, 2022).
The biohazard symbol indicates the presence of pathogens or other matter that is potentially harmful or poses a health risk. See, e.g., U.S. Department of Energy, Berkeley Lab, Biohazardous Waste Labels, http://www2.lbl.gov/ehs/waste/pub-3095/wm_pub_3095_ch2.shtml (accessed Aug. 14, 2017).
The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of "no," "not," or "prohibited." See, e.g., Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php (accessed June 16, 2021).
Universal symbols may appear as one element of a mark, or they may form an entire mark. The informational aspect of these symbols is often at odds with the functions of trademarks and service marks: to identify and distinguish one’s goods or services and indicate their source. Specifically, a universal symbol may fail to function as a mark because it only imparts information, conveys an informational message, or provides ornamentation. See 15 U.S.C. §§1051, 1052, 1053, 1127; TMEP §§1202, 1202.03, 1202.04. In addition, a universal symbol may merely describe a feature, quality, function, purpose, or characteristic of goods or services. See15 U.S.C. §1052(e)(1); TMEP §§1209, 1209.01(b). If a universal symbol in a mark creates a false impression about a characteristic or quality of an applicant’s goods or services, the mark may be deceptive or deceptively misdescriptive. See 15 U.S.C. §§1052(a), 1052(e)(1); TMEP §§1203.02–1203.02(g), 1209.04. As explained in TMEP §1202.17(b), however, registration of a universal symbol may be permissible in some instances.
For each application, the examining attorney must determine whether the mark contains a universal symbol. Some universal symbols, such as the recycling symbol, are immediately identifiable. Others may not be, and applications for marks containing a symbol do not always identify the symbol, explain its significance, or indicate whether it is shown in a stylized or unusual form.
If a mark includes or consists of a symbol (or an unfamiliar symbol-like element), the examining attorney should review the application for any information the applicant may have provided about the symbol and ensure that an accurate description is included in the record. See TMEP §§ 808.03, 808.03(b), (d). The examining attorney may also use the mark’s assigned design codes to determine the name of the symbol and to search the Trademark database for applications and registrations that describe the symbol. See TMEP §104. If the design codes assigned to the mark do not accurately reflect the significant elements of the mark, the examining attorney should ensure that the design codes are updated so that the correct codes are listed. See TMEP §808.03(f). After identifying the symbol, the examining attorney may find additional information about it by using Internet search engines or symbol reference websites.
Even without the name of the symbol, the examining attorney may be able to find information about it by entering a textual description of it in an Internet search engine. For instance, one could find information about the recycling symbol, even without knowing the name of the symbol, by using the following textual description in a search engine query: "green curved arrows triangle." Additionally, the examining attorney could consult a symbol reference website that provides a means of searching based on a symbol’s graphical characteristics. See Symbols.com, Graphical Index, http://www.symbols.com (accessed June 16, 2021).
In addition, the Trademark Law Library holds a number of reference books about symbols and their meaning, and its librarians are available to assist USPTO personnel in researching questions regarding the identity, significance, and use of symbols. Furthermore, under Trademark Rule 2.61(b), the examining attorney may require the applicant to provide additional information about an unfamiliar symbol in a mark. 37 C.F.R. §2.61(b).
The examining attorney’s research may show that a symbol (or symbol-like element) in a mark is not a universal symbol. However, other symbols, symbol-like elements, and designs that are not universal symbols may nonetheless be perceived only as informational matter and thus fail to function as marks. In these instances, the examining attorney need not take any further action with respect to the universal symbol analysis, but should ensure that the application record contains a mark description that accurately describes the significant elements of the mark. TMEP §§808.01, 808.02, 808.03(b). The examining attorney should otherwise review the application according to standard USPTO practice and determine whether it complies with all applicable trademark statutes and rules.
If the mark contains a universal symbol, the examining attorney must determine whether the mark displays the symbol in the usual manner or otherwise features an accurate depiction of the symbol. This may be done by comparing the symbol in the mark with any accurate depictions of the symbol the examining attorney finds while researching the symbol.
Generally, a universal symbol in a mark should be considered registrable matter if it is highly stylized, if it incorporates elements that are not usually in the symbol, or if it is integrated with other matter in the mark, and, as a result, a distinctive commercial impression separate and apart from the symbol’s usual significance is created or a source-indicating unitary whole is formed. Cf. In re LRC Prods. Ltd., 223 USPQ 1250, 1252 (TTAB 1984) (noting that "where designs or representations were more realistic and where the design left no doubt about the depiction of a central feature or characteristic of the goods or services," the Trademark Trial and Appeal Board has found that such designs and representations are merely descriptive); TMEP §1213.03(c) ("No disclaimer of highly stylized pictorial representations of descriptive matter should be required[,] because the design element creates a distinct commercial impression."); TMEP §1213.05(f) ("The visual presentation of a mark may be such that the words and/or designs form a unitary whole. In such a case, disclaimer of individual nondistinctive elements is unnecessary."); TMEP §1213.05(g)(iv) ("If literal and design elements in a mark are so merged together that they cannot be divided or regarded as separable elements, these elements may be considered unitary."). However, displaying an accurately depicted universal symbol as a replacement for a letter in a mark’s literal element normally will not change the symbol’s usual impression (or create a unitary whole), nor will minor alterations to the symbol, such as slight stylizations or nondistinctive changes to color scheme or proportions. Cf. TMEP §§1213.03(c), 1213.05(g).
If the mark displays the universal symbol in the usual manner, or otherwise features an accurate depiction of the symbol, the examining attorney must determine whether, in view of the identified goods or services, it is necessary to issue a refusal or disclaimer requirement based on failure to function, mere descriptiveness, deceptive misdescriptiveness, or deceptiveness grounds. See TMEP §§1202.17(c)(i), 1202.17(d)(i)-(d)(ii).
The USPTO will not register an applied-for designation unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Team Jesus LLC, 2020 USPQ2d 11489, at *2 (TTAB 2020) (quoting In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) ("Before there can be registrability, there must be a trademark (or a service mark). . . ."); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) ("Registration presupposes the existence of a trademark to be registered."); TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See 15 U.S.C. §1127; TMEP §1202. Not every designation that a party places on goods or packaging, or uses in connection with services, necessarily performs these source-indicating functions, regardless of the party’s intentions when adopting the designation. In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *2-3 (TTAB 2020) (quoting In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009); Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973).
The determination of whether a universal symbol in a proposed mark functions as a source indicator involves considering the meaning and significance of the symbol, the nature of the use of the symbol in the relevant field or marketplace, and the impression created when the symbol is used in connection with the identified goods or services. Cf. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (TTAB 2021) (citing In re Greenwood, 2020 USPQ2d 11439, at *2 (TTAB 2020)) ("The critical inquiry in determining whether a proposed mark functions as a trademark [or service mark] is how the relevant public perceives the term sought to be registered."); In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *2 (TTAB 2020) (quoting In re Eagle Crest, Inc., 96 USPQ 1227, 1229 (TTAB 2010)).
Relevant evidence of a symbol’s significance and usual manner of use includes the resources referenced in TMEP §1202.17(b)(i), any other competent materials indicating the meaning of the symbol, and Internet excerpts or similar matter showing the symbol being used in a particular field or context, or in connection with the relevant goods or services.
Weighing these considerations in view of the available facts and evidence may lead the examining attorney to the conclusion that the mark does not serve as a source indicator, but instead fails to function because it (1) imparts information about the goods or services (see TMEP §1202.17(c)(i)(A)), (2) conveys an informational message (though not necessarily about the goods or services themselves) (see TMEP §1202.17(c)(i)(A)), or (3) serves only as ornamentation on the goods or services (see TMEP §1202.17(c)(i)(B)).
Universal Symbols that Impart Information About the Goods or Services
Merely informational matter is not registrable as a trademark or service mark. See TMEP §1202.04. When a universal symbol in a mark is used in its usual context or field, or with relevant goods or services, it will likely impart its generally recognized meaning and thus perform only an informational function, rather than serve to identify any single source of the goods or services. Cf. In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *1, *9 (TTAB 2019) (holding the mark ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED and the same mark with the additional wording FROM NORTH AMERICA, which both included a design of an accurate pictorial representation of a crab, failed to function as marks for crabmeat); In re Schwauss, 217 USPQ 361, 362-63 (TTAB 1983) (holding the mark FRAGILE appearing in a "jarred or broken" stylization failed to function as a mark for labels and bumper stickers); TMEP §1202.04(a). For instance, because the biohazard symbol commonly appears on items to indicate the presence of hazardous materials, the symbol is unlikely to function as a trademark on goods such as containers for disposing of medical waste. See, e.g., Graphic Products, Biohazard Signs, https://www.graphicproducts.com/biohazard-signs/?page=1 (accessed June 16, 2021).
In these circumstances, the symbol’s position, prominence, and surrounding context on the specimen of use will not be as significant in the analysis, because the symbol will function only as informational matter regardless of its manner of use on the specimen. Cf. In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *18 (TTAB 2019) (affirming refusal to register SCOOP for ice cream and frozen confections "because, at most, it merely informs purchasers of the serving size of the goods"); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (affirming refusal to register DRIVE SAFELY because "to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . ."); In re Schwauss, 217 USPQ at 362 ("[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object."). Nonetheless, the examining attorney should analyze how the mark (and the symbol in it) is used on the specimen because it may lend further support to the failure-to-function refusal. Cf. In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *2 (TTAB 2019) (affirming refusal to register UNLIMITED CARRYOVER for telecommunications services because the phrase "simply provides information about the services" and applicant’s manner of use underscored and illustrated that meaning).
Sometimes a symbol is applied to goods or services outside the symbol’s normal context and the symbol could therefore serve a source-indicating function. Thus, the biohazard symbol could function as a service mark for live musical-performance services, for example, because the symbol would not provide any relevant information about the services, even when encountered by someone who knows what the symbol usually means.
Universal Symbols that Convey an Informational Message
Even if a proposed mark does not directly impart information about goods or services, it may nonetheless fail to function as a mark if it merely conveys ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages in common use. Cf. In re Team Jesus, LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020)). For example, common phrases and slogans that are frequently displayed by many different parties on various products or with various services are not likely to be viewed as source indicators, even if the matter is being used in a non-ornamental manner. Cf. In re Mayweather Promotions, 2020 USPQ2d 11298, at *2; In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019). Instead, such goods would likely be purchased for the message the phrase or slogan conveys. Cf. In re Wal-Mart Stores, 129 USPQ2d at 1152. See TMEP §1202.04 regarding marks consisting of informational matter.
Likewise, when certain commonly used universal symbols appear on goods such as clothing, fashion accessories, and household items, they would likely be perceived as conveying an informational message and the goods featuring these symbols would likely be purchased for that reason. For example, evidence may show that when the recycling symbol appears on the upper-left chest area of a t-shirt, those encountering the shirt are likely to assume that it indicates support for recycling or environmental causes in general. Or evidence may support the conclusion that a peace symbol used on t-shirts or stickers likely will not function as mark, because even if it is not ornamental and does not necessarily provide any particular information about the goods themselves, it is informational in the sense that it conveys a message of supporting peace.
The examining attorney may support a failure-to-function refusal in these cases by providing evidence that indicates the widely recognized meaning of the symbol, establishes that the symbol is commonly used to convey particular information, and shows that the symbol commonly appears on the goods or in connection with the services at issue or analogous goods or services. Cf. In re Wal-Mart Stores, 129 USPQ2d at 1153-56. Factors such as the symbol’s position and prominence on the goods, as shown by the specimen of use, may also support the determination that the matter will be perceived only as conveying a message. Cf. In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3. As with any other substantive refusal, the amount, type, and nature of the evidence required to support a failure-to-function refusal will vary depending on the facts of the particular application.
Although this issue is more likely to arise when universal symbols are displayed on goods, it is also possible for a universal symbol to convey an informational message when used in connection with services.
Matter that serves only as an ornamental feature of goods does not identify and distinguish the goods and, thus, does not function as a trademark. TMEP §1202.03. Like any other design element, universal symbols may be used ornamentally on goods such as clothing, jewelry, fashion accessories, and household items. In these instances, the symbol’s position, prominence, and surrounding context on the specimen are particularly significant in determining whether the matter serves as ornamentation. For more information on the relevant considerations, see TMEP §§1202.03–1202.03(d).
The examining attorney should not suggest the usual response options for an ornamental refusal (i.e., showing secondary source, claiming acquired distinctiveness, or amending to the Supplemental Register) unless the proposed mark is capable of serving as a mark and does not also fail to function because it imparts information or conveys an informational message. See TMEP §1202.03.
If a proposed mark consists entirely of a universal symbol and the examining attorney determines that the universal symbol fails to function as a source indicator for the identified goods, the examining attorney must issue a refusal to register the mark on the Principal Register under Trademark Act Sections 1, 2, and 45. 15 U.S.C. §§1051, 1052, 1127. For service marks, the refusal is based on Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§1051, 1052, 1053, 1127. For applications seeking registration on the Supplemental Register, the statutory basis for the failure-to-function refusal is Trademark Act Sections 23 and 45. 15 U.S.C. §§1091, 1127.
When issuing a failure-to-function refusal, the examining attorney must explain the particular reasons the mark does not function as a trademark or service mark and provide sufficient evidence in support of the explanation. Cf. In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 (TTAB 2020) (finding "the [e]xamining [a]ttorney's evidence establishes not only that PAST PRESENT FUTURE is a widely used message that conveys a concept, but also that consumers are accustomed to seeing that message displayed in a non-source identifying manner on t-shirts. Taken together, these two forms of evidence strongly support a finding that PAST PRESENT FUTURE is not perceived as a mark when used in connection with t-shirts"); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *2-3 (TTAB 2019) (finding that the examining attorney’s dictionary and third-party website evidence "supports a finding that UNLIMITED CARRYOVER as used on the specimen will be perceived as merely an informational slogan which conveys information about [the services] rather than as a service mark to indicate source"); TMEP §§1202, 1301.02(a). See TMEP §1202.17(b)(i) and §1202.17(c)(i) for further discussion of evidence.
Generally, the failure-to-function refusal is a specimen-based refusal. TMEP §§1202, 1301.04(g)(ii). However, the examining attorney may issue a failure-to-function refusal for applications based on §1(b), §44, or §66(a) if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark. See TMEP §§1202, 1301.04(g)(ii).
If the examining attorney is otherwise issuing an Office action and anticipates refusing a mark in a §1(b) application on failure-to-function grounds once the applicant submits a specimen with an allegation of use, the examining attorney should advise the applicant of the potential refusal. TMEP §§1202, 1301.04(g)(ii). If possible, this should be done in the initial Office action. However, failure to provide an advisory does not preclude an examining attorney from later refusing registration. Id.
If a proposed mark fails to function because it consists of a universal symbol that is informational or that conveys an informational message, the examining attorney should not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8;(TTAB 2019); see also TMEP §1202.04(d). The relevant issue is not whether the proposed mark is distinctive but whether it question even functions as a mark. See In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *4 (TTAB 2019) ("Matter that does not operate to indicate the source or origin of the identified services and distinguish them from those of others does not meet the statutory definition of a [trademark or] service mark and may not be registered, regardless of claims of acquired distinctiveness."); In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (agreeing with the examining attorney that "evidence of distinctiveness under Section 2(f) of the Act is irrelevant to the issue of whether the subject phrase [at issue] functions as a technical service mark"). Therefore, neither a claim of acquired distinctiveness under Trademark Act Section 2(f) nor an amendment to the Supplemental Register is a proper response to the refusal. See TMEP §1202.04(d). Furthermore, allowing registration in these instances, either on the Principal Register under Section 2(f) or on the Supplemental Register, would inhibit others from using merely informational matter that should be freely available to use. See TMEP §1202.04 regarding marks consisting of merely informational matter.
In addition, the examining attorney should not suggest that the applicant submit a substitute specimen or amend to an intent-to-use filing basis in these cases. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (quoting D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)); see also TMEP §1202.04(d). If the mark is informational or conveys an informational message, the applicant likely will be unable to provide a specimen showing proper trademark or service mark use. The applicant may amend the application to an intent-to-use basis, but it likely will only temporarily overcome the refusal, given that a specimen showing proper trademark or service mark use is required before a registration may issue. See TMEP §1103. The examining attorney must review any substitute specimen submitted to confirm that the refusal should be maintained.
Finally, if a proposed mark consisting of a universal symbol fails to function as a mark only because it is used in an ornamental manner on the specimen, and it is possible the proposed mark could function as a mark if used in a trademark manner, then all of the response options discussed immediately above should be suggested by the examining attorney, if otherwise appropriate. See TMEP §§1202.03-1202.03(e) regarding refusing marks on the basis of ornamentation and appropriate response options.
If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears along with other non-source-indicating matter, the examining attorney must issue a failure-to-function refusal. See TMEP §1202.17(c)(ii).
If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears in a non-unitary manner with other registrable matter that is arbitrary, fanciful, suggestive, or otherwise source-indicating, the examining attorney must require a disclaimer of the universal symbol. See Trademark Act Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a). The examining attorney should not suggest that the applicant claim acquired distinctiveness in part as to the symbol. See TMEP §1202.17(c)(ii)(B).
An applicant may also delete a purely informational universal symbol that appears along with other registrable matter, provided the symbol is separable from the other matter and the deletion does not materially alter the commercial impression of the mark. See TMEP §807.14(a).
The examining attorney should also consider the following potential grounds for refusal when reviewing a mark featuring a universal symbol. In addition to those discussed below, the examining attorney should determine whether there is a sufficient basis for any other relevant refusals (e.g., a §2(d) refusal).
Often, when the examining attorney has determined that a universal symbol fails to function because it only provides information about the goods or services, the available evidence will also support a refusal (or a disclaimer requirement) under Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), based on mere descriptiveness.
If a mark consists of a merely descriptive universal symbol and other descriptive, generic, or otherwise non-source-indicating matter, then the mark is merely descriptive in its entirety and the examining attorney must issue a refusal under §2(e)(1). If a mark consists of a merely descriptive universal symbol, along with other arbitrary, fanciful, or suggestive matter, the examining attorney must require a disclaimer of the universal symbol unless the composite mark creates a unitary commercial impression. See Trademark Act §6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a).
When both a §2(e)(1) and a failure-to-function refusal are issued, the examining attorney should not suggest that the applicant claim acquired distinctiveness or amend to the Supplemental Register. For more information, see TMEP §1202.17(c)(ii)(B).
The inclusion of a universal symbol in a mark may lead consumers to believe the goods or services have a particular characteristic or quality. For instance, evidence may show that a mark featuring the recycling symbol would lead to a perception that the goods to which the mark is applied are recyclable or are made of recycled materials.
If the relevant goods or services do not have the relevant characteristic or quality, then the mark may be deceptive under Trademark Act Section 2(a) or deceptively misdescriptive under Section 2(e)(1). In those instances, the examining attorney should follow the same procedures as would apply to any deceptive or deceptively misdescriptive mark. For more information, see TMEP §§ 1203.02–1203.02(g) and 1209.04.
The universal symbols discussed below frequently appear in applied-for marks. Some of these symbols are so widely used and well known that they will have only non-trademark significance when used with almost any good or service in any context or field. Others will fail to function as source indicators only when used with particular goods or services. Nonetheless, all of these symbols could function as source indicators if they are displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. See TMEP §1202.17(b)(ii). Like any design element, all of these symbols may be used in an ornamental manner on goods and, if so, should be refused accordingly. Finally, depending on the particular facts and available evidence, other grounds for refusal may apply to marks containing these symbols (e.g., Section 2(e)(1), Section 2(d), Section 2(a)).
The awareness ribbon symbol is a representation of a ribbon intended to signify and promote awareness of a particular cause. The specific cause represented depends on the color or color scheme displayed. See, e.g., Support Store, Cause Awareness By Color, https://www.supportstore.com/cause-awareness-by-color.html (accessed June 16, 2021). For example, the pink awareness ribbon is commonly associated with awareness of breast cancer and related causes. See id. Yellow ribbons are frequently used to indicate support of the armed forces. See id. And red ribbons are typically associated with awareness of HIV/AIDS or heart disease. See id.
Due to the widespread use of the awareness ribbon in various colors to indicate support for, or raise awareness of, a cause, the awareness ribbon shape by itself will not function as a source indicator. However, the examining attorney must evaluate an awareness ribbon symbol in a mark as a whole, including the color, color scheme, pattern, or other matter inside of the ribbon, to determine whether it functions as a source indicator.
Some awareness ribbons have become so widely used and well known that they are unlikely to function as a mark when used in connection with almost any goods or services. These include ribbons in pink, yellow, red, and possibly others. The pink awareness ribbon, for example, has become the universal symbol of breast cancer awareness. This symbol appears in connection with the charity activities of numerous organizations and is used on a wide variety of products, including clothing, jewelry, sports equipment, and household items. Often, when it is used, it has informational or ornamental characteristics, or both. Thus, it is more likely that consumers, upon encountering the pink ribbon symbol on a product, would view it as informational or decorative regardless of the particular context or use. For instance, evidence may support the conclusion that, when a pink ribbon is displayed on the packaging for a household appliance, the ribbon would likely be viewed as indicating that the product has some connection to a breast cancer-related cause (e.g., some portion of the proceeds from the sale of the appliance would go towards breast cancer research). Or evidence may establish that the pink ribbon symbol displayed on a shirt would be viewed as conveying the message that the wearer is a supporter of breast cancer survivors or breast cancer causes in general. Even when an awareness ribbon symbol features a particular color, color scheme, or pattern that is not commonly used or widely recognized, the examining attorney should evaluate whether the symbol is inherently distinctive.
The actions an examining attorney will take when examining a mark featuring an awareness ribbon symbol depend on which of the following categories the awareness ribbon symbol falls under:
Category 1: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive and the evidence shows that the symbol’s use by various parties in that color, color scheme, or pattern is so widespread, and its meaning so widely understood, that it will likely be perceived as only providing information or conveying an informational message when used in connection with the goods or services.
This type of awareness ribbon symbol fails to function as a mark and the examining attorney must refuse registration if the symbol forms the entire mark or appears with only other non-source-indicating matter, or disclaim the symbol if it appears with registrable matter.
Awareness ribbon symbols in this category are incapable of functioning as a mark. Thus, if the mark consists entirely of this type of symbol, claiming acquired distinctiveness under §2(f) or amending the application to seek registration on the Supplemental Register will not overcome the refusal. Likewise, a claim of acquired distinctiveness in part will not obviate a disclaimer requirement.
Awareness ribbon symbols that do not contain inherently distinctive matter inside the ribbon, and are displayed in black and white, or gray scale, because they appear in non-color mark drawings, are incapable of functioning as a mark and would be subject to the same procedures set forth above.
Examples:
Pink ribbon
Yellow Ribbon
Black-and-White or Gray Scale Ribbon
Category 2: The awareness ribbon symbol is not displayed in the mark in a way that creates a distinct commercial impression or forms a source-indicating unitary whole. The color, color scheme, pattern, or other matter inside the awareness ribbon shape is not inherently distinctive, but there is no evidence that the awareness ribbon symbol shown in the mark is widely used by various parties or that its meaning is widely understood.
In these cases, the symbol is not inherently distinctive and fails to function as a mark because, given the widespread use of awareness ribbons in various colors and patterns generally, the symbol will not be perceived as a source indicator. Thus, the examining attorney must refuse registration if the symbol forms the entire mark (or appears with other non-source-indicating matter), or require a disclaimer of the symbol if the symbol appears with registrable matter. However, the applicant may overcome the refusal by showing acquired distinctiveness based on actual evidence establishing recognition of the proposed mark as a source indicator, or by amending the application to seek registration on the Supplemental Register. For awareness ribbon symbols in this category, evidence of five years’ use usually will not be sufficient to show that the mark has acquired distinctiveness. See TMEP §§1212.06–1212.06(e)(iv) for information on establishing acquired distinctiveness by actual evidence. A disclaimer requirement may be obviated by claiming acquired distinctiveness in part as to the symbol based on actual evidence.
Examples:
for "promoting public awareness of domestic violence, sexual assault and child abuse"
for "surgery; and medical services, namely, treatment of breast disease"
Category 3: The matter inside the awareness ribbon shape in the mark is inherently distinctive or otherwise registrable (e.g., non-descriptive/non-informational wording, registrable design elements) and there is no evidence that the awareness ribbon shown in the mark is widely used by various parties or that its meaning is widely understood.
No refusal (or disclaimer) is necessary, as long as the awareness ribbon is not used ornamentally on the specimen, because the ribbon shape and the matter within it create a registrable unitary whole.
Examples:
for "charitable fund raising, namely, raising funds for breast cancer research and treatment"
for "educational services, namely, conducting conferences, workshops, seminars, and classes in the fields of autism and advocacy on behalf of autistic children and adults"
The recycling symbol typically appears on materials to indicate that they are recyclable or made from recycled matter. See, e.g., Recyclenow.com, Recycling Symbols Explained, https://www.recyclenow.com/recycling-knowledge/packaging-symbols-explained (accessed June 16, 2021). However, the symbol is also used in connection with a wide assortment of goods and services in a variety of fields to indicate that the goods or services involve recycling or are otherwise environmentally friendly. See id.
Because of the widespread use of the symbol and the resulting general recognition of the symbol’s significance, the symbol is not likely to function as a source indicator. Instead, the evidence will show consumers are likely to view it as merely providing information about the goods or services, in which case a failure-to-function refusal is appropriate. Even when the symbol is displayed on clothing and fashion accessories in a manner that would normally be considered trademark use, evidence will likely show the mark will be perceived as conveying an informational message (e.g., that the wearer supports recycling or environmental awareness). See In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 (TTAB 2020) (finding "the Examining Attorney's evidence establishes not only that PAST PRESENT FUTURE is a widely used message that conveys a concept, but also that consumers are accustomed to seeing that message displayed in a non-source identifying manner on t-shirts," which was strong evidence that the proposed mark did not function as a mark when used in connection with t-shirts."); See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230 (TTAB 2010) (holding that consumers would not view the "old and familiar" slogan ONCE A MARINE, ALWAYS A MARINE as a trademark indicating the source of the applicant’s clothing because they would be accustomed to seeing it displayed on clothing from many different sources, and noting that "[i]t is clear that clothing imprinted with this slogan would be purchased by consumers for the message it conveys"). The symbol will usually also have descriptive significance as applied to the relevant goods or services.
The caduceus and the Rod of Asclepius are commonly used to indicate that goods or services are medical in nature or otherwise relate to the medical profession. See Webster’s New World College Dictionary 195 (3rd ed. 1997) (defining "caduceus" as "the staff of an ancient herald; esp., the winged staff with two serpents coiled about it . . . an emblematic staff like this with either one or two serpents, used as a symbol of the medical profession"); THEFREEDICTIONARY.COM, search of "Rod of Asclepius," https://medical-dictionary.thefreedictionary.com/Rod+of+Asclepius (accessed June 16, 2021) (citing Segen’s Medical Dictionary) (defining "Rod of Asclepius" as "[t]he ‘correct’ symbol of medicine, which is a knarled [sic] wooden staff with a single encircling snake"). The prescription symbol is frequently used in connection with prescription drugs or medicated goods, or with services relating to these items. See Webster’s New World College Dictionary 1178 (3rd ed. 1997) (defining "Rx" as "symbol for PRESCRIPTION"). For any marks containing these symbols, the examining attorney should review the specimen, the relevant evidence, and the goods/services to determine if the mark functions as a source indicator or instead is merely informational. In those instances that the mark fails to function, there is likely also a valid basis for finding the symbol descriptive.
Religious symbols, such as the Latin cross and the Star of David, may be informational or have descriptive significance when used on a variety of goods and services. For example, evidence may support the conclusion that, as used in connection with media such as books or videos, the Star of David is likely to be perceived as providing information about or describing the media’s content. Or evidence may show that a Latin cross used in an advertisement for services is likely to be viewed as conveying an informational message (i.e., indicating an affiliation with Christianity). Note that a mark containing a Greek cross (i.e., an upright equilateral cross) may be subject to other refusals. See TMEP §1205.01.
When used with financial services, such as currency exchange or banking, evidence will show currency symbols, such as the dollar sign or the euro symbol, will likely be informational and merely descriptive. However, when used in connection with other types of goods or services, the evidence may show these symbols to be arbitrary or suggestive and otherwise function as a mark.
The universal prohibition symbol, which usually appears superimposed over another image or wording, is a visual representation of "no," "not," or "prohibited." See, e.g., Free Signage.com, Prohibition Signs, http://www.freesignage.com/prohibited_signs.php (accessed June 16, 2021). When the prohibition symbol is superimposed over other matter, the design as a whole is unitary; thus, no disclaimer of the prohibition symbol apart from the other matter is necessary. However, the examining attorney must consider whether evidence supports the conclusion that the design as a whole (i.e., the symbol and the image it is superimposed over) fails to function as a mark or is merely descriptive (or both) and thus must be refused or disclaimed.
A "hashtag" is a form of metadata consisting of a word or phrase prefixed with the symbol "#" (e.g., #chicago, #sewing, and #supremecourtdecisions). Hashtags are often used on social-networking sites to identify or facilitate a search for a keyword or topic of interest. See Dictionary.com, search of "hashtag," https://www.dictionary.com/browse/hashtag (accessed May 27, 2021) (citing Random House Unabridged Dictionary as its proprietary source).
A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. See TMEP §1202 regarding the determination of whether a mark functions as a mark.
When examining a proposed mark containing the hash symbol, careful consideration should be given to the overall context of the mark, the placement of the hash symbol in the mark, the identified goods and services, and the specimen of use, if available. If the hash symbol immediately precedes numbers in a mark (#29 JONES, THE #1 APP, # TWELVE, etc.), or is used merely as the pound or number symbol in a mark (e.g., ICHIBAN#), such marks should not necessarily be construed as hashtag marks. This determination should be made on a case-by-case basis.
Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media (i.e., social-media participants are directed to search a particular subject by typing, e.g., "hashtag ABC," where ABC is the subject). See In re DePorter, 129 USPQ2d 1298, 1303 (TTAB 2019); In re i.am.symbolic, llc, 127 USPQ2d 1627, 1633 (TTAB 2018).
Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable. Cf. TMEP §807.14(c) ("Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark."); TMEP §1209.03(m) (addition of generic top-level domain name to otherwise unregistrable matter typically cannot render it registrable). Accordingly, if a proposed mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, or fails to function as a trademark because it is merely informational matter, then the entire mark must be refused.
Example:
#SKATER for skateboards is merely descriptive
A mark may be registrable with a disclaimer of the wording HASHTAG or the hash symbol in cases where they are separable from other registrable matter. Therefore, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is distinctive for the goods or services, the hash symbol or the term HASHTAG should be disclaimed.
Examples:
# INGENUITY for business consultation services is registrable with a disclaimer of the hash symbol
TMARKEY #SKATER for skateboards is registrable with a disclaimer of "# SKATER"
Cf. TMEP §1215.07 for further information and analogous examples.
When a mark containing the hash symbol or the term HASHTAG is unitary with other arbitrary or suggestive wording in the mark, (e.g., #SLUGGERTIME for t-shirts, #DADCHAT for emotional counseling for families, and HASHTAGWALKING for live music concerts), no descriptive or generic refusal or disclaimer is required. However, such marks must still be evaluated to confirm that they function as source indicators for the goods or services. If the specimen shows the hash symbol or the term HASHTAG in a proposed mark as merely a tag used to reference or organize keywords or topics of information to facilitate searching a topic, the relevant public will not view the hash symbol or the term HASHTAG in the mark as identifying the source of the goods or services. In such cases, registration must be refused under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051, 1052, 1127, for trademarks, and Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C §1051 -1053, 1127, for service marks. Cf. In re Roberts, 87 USPQ2d 1474 (TTAB 2008); In re Eilberg, 49 USPQ2d 1955 (TTAB 1998) ; TMEP §1215.02(a).
For example, if the proposed mark #SEWFUN for instruction in the field of sewing appears on a specimen comprising a screenshot of a social networking site used merely to organize users’ comments about sewing classes applicant offers, the mark must be refused registration for failure to function as a service mark.
Sometimes, marks that consist solely of variants of the term HASHTAG or the hash symbol may function as a mark, such as when the mark will be used in connection with goods or services that do not relate to social networking. In these cases, the symbol and term HASHTAG may not create the commercial impression of being a metadata tag since they do not immediately precede other wording, and may be considered suggestive or arbitrary, depending on the associated goods and services (e.g., HASHTAG for use in connection with liquor or THE HASHTAG for rental of office space).
A repeating-pattern mark is a mark composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters, forming a pattern that is displayed on the surface of goods, on product packaging, or on materials associated with the advertising or provision of services. The pattern may appear over the entire surface or on just a portion of the relevant item.
Repeating-pattern marks are often applied to clothing and fashion accessories, but they also appear on other goods, including furniture, bedding, dinnerware, luggage, paper products, and cleaning implements. In addition, these marks frequently appear on packaging for a variety of goods and have been registered for use in connection with services such as retail stores and travel agencies. For examples of repeating-pattern marks, see TMEP §1202.19(k).
In a repeating-pattern mark, the repetition of the mark’s elements is a feature of the mark, which must be appropriately specified in the application. See TMEP §§1202.19(a), (b). The fact that the specimen shows the mark depicted in the drawing being used in a repetitive fashion on the relevant items is not, by itself, a sufficient basis for treating the mark as a repeating-pattern mark. That is, despite what is shown in the specimen, the applicant might not be seeking a registration in which repetition is a feature of the mark. Accordingly, there also must be some indication in the mark description or on the drawing to indicate that the mark consists of a repeating pattern.
If the nature of the mark is ambiguous, the examining attorney must seek clarification from the applicant through a Trademark Rule 2.61(b) requirement for information, or by telephone or email communication, as appropriate. See 37 C.F.R. §2.61(b); TMEP §814. Any clarification obtained through informal communication should be recorded in a Note to the File or in a subsequent Office action or examiner’s amendment. See TMEP §709.05.
A repeating pattern that is unique when used in connection with the relevant goods or services may be inherently distinctive. See TMEP §1202.19(e)(i)(A). However, because of the ornamental and typically nondistinctive nature of repeating patterns, consumers often do not perceive these patterns as source indicators, in which case they may not be registered on the Principal Register without proof of acquired distinctiveness. See TMEP §§1202.19(e)–(e)(iii).
The drawing for a repeating-pattern mark must be a substantially exact representation of the mark. See 37 C.F.R. §2.51; TMEP §§807.12–807.12(d). The impression created by a repeating pattern may change depending on a number of factors, including the nature of the pattern and the item it appears on, the particular placement of the pattern on the item, and the size and scale of the elements in the pattern as applied. Thus, in most cases, to accurately depict the mark, a drawing showing the particular manner of display and placement of the repeating pattern is necessary. A swatch-type drawing—one that does not show the particular placement of the mark but instead consists of a sample of the repeating pattern displayed within a square, rectangle, or other geometric shape—is acceptable only under certain circumstances. See TMEP §1202.19(a)(iii) for additional information on swatch-type drawings.
The drawing for a repeating-pattern mark applied in a particular manner to a single item must depict the pattern as it appears on the item. Thus, if the pattern appears only on a portion of the item, the drawing must show the pattern’s placement on that portion. If the pattern appears over the entire surface of the item, the drawing must depict the pattern accordingly. The shape of the item must appear in broken lines to indicate that it is not claimed as part of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08. If the drawing shows the item in solid lines, the USPTO will interpret the drawing as indicating that the proposed mark is a composite mark consisting of both the repeating pattern and the shape of the item to which it is applied. Cf. TMEP §1202.05(d)(i).
If it is unclear what portions of the drawing are claimed as part of the mark, the examining attorney must seek clarification from the applicant through a Trademark Rule 2.61(b) requirement for information, or by telephone or email communication, as appropriate. See 37 C.F.R. 2.61(b); TMEP §§709.05, 814. Based on that clarification, the examining attorney must also require the appropriate amendments to the drawing and mark description.
See TMEP §§1202.19(f)–(f)(ii) regarding the relevant examination procedures when an application identifies goods that are inconsistent with the depiction of the mark in the drawing.
If the repeating pattern will be applied to multiple goods, a drawing showing the pattern’s placement on one of the goods is appropriate if all of the identified goods are similar in form and function, and the mark will appear in a similar manner on all of the goods. Under these circumstances, a depiction of one of the goods may be considered a substantially exact representation of the mark as used on all of the goods. For example, if a repeating pattern is used in a similar manner on similarly shaped purses of various sizes, a drawing showing the repeating pattern on one version of the purses (shown in broken lines) would be acceptable. Another example is a repeating-pattern mark that is applied in the same manner to the handles of tableware forks, spoons, and knives. In that case, a drawing that depicts the mark on one of the items (shown in broken lines) would be acceptable.
Likewise, if the repeating-pattern mark will appear in a similar manner on various sizes of similarly shaped product packaging, then a drawing showing the mark appearing on one version of the packaging depicted in broken lines is acceptable.
Sometimes an applicant uses, or intends to use, a repeating-pattern mark in various ways on the same or similar items, or in similar or different ways on a variety of items. In those circumstances, a drawing depicting the mark appearing on a particular item will not accurately depict the mark and the nature of its use.
Previously, to address this issue, applicants have submitted swatch-type drawings, which do not show a particular placement of the mark, but instead consist of a sample of the repeating pattern within a square, rectangle, or other geometric shape. These swatch-type drawings usually will not adequately depict the nature of the mark for which registration is sought, because the impression created by a repeating pattern may change depending on the nature of the pattern, the type of item on which the pattern appears, the particular placement of the pattern on that item, and the size and scale of the elements in the pattern as applied. Accordingly, these swatch-type drawings could encompass multiple versions of the mark, each of which may convey a different commercial impression. Therefore, such swatch-type drawings are usually not appropriate for repeating-pattern marks, and examining attorneys generally should not accept them.
However, a swatch-type drawing is acceptable if the applicant shows with sufficient evidence that (1) the applied-for mark is actually used, or will be used, in various ways or on a variety of different items, but (2) it will nonetheless be perceived as a source indicator and create the same commercial impression across all uses.
The evidence of variable use need not show every use of the repeated pattern on the relevant items, but it should provide a reasonable basis for concluding that the use of the mark in connection with the identified goods or services is so varied that a single depiction of the mark on a particular item would not accurately reflect the nature of the mark. For applications not based on use in commerce, the evidence should indicate the applicant’s intention to use the mark in various ways or on a variety of different items. This may include declarations, marketing materials, and other similar matter.
The evidence as to the commercial impression must be substantial and must establish that the pattern will be perceived as a source indicator and create the same commercial impression in the minds of consumers. Relevant evidence may include consumer declarations; advertisements or other materials showing various instances of the pattern being used together in one place (e.g., a single advertisement that shows the pattern being used in various ways on various goods, but nonetheless projecting the same commercial impression); sales figures relevant to the various items featuring the pattern; and any other evidence of the applicant’s efforts to promote the various uses of the repeating pattern as a single source indicator for the relevant goods or services, including "look-for"-type evidence. Although the evidence listed above is similar to evidence that would be submitted in support of an acquired-distinctiveness claim, here the examining attorney’s determination is focused not on whether the mark has acquired distinctiveness but on whether the use or intended use of the mark, and the likely consumer perception of it, satisfy the specified conditions for acceptance of a swatch-type drawing.
Even if these conditions are satisfied, an examining attorney must also consider the applied-for mark’s distinctiveness. For example, to support a swatch-type drawing for such varied goods as "business card cases; coin purses; cosmetic cases sold empty; dog collars; dog leashes; handbags; luggage tags; overnight bags; pet clothing; umbrellas; wallets; and wristlet bags" the applicant might submit some or all the following: a statement that the mark had been used for more than 10 years on hangtags, packaging, promotional materials, and across various product categories; evidence showing that it is a common practice in the industry for fashion brands to develop signature patterns; examples of pattern designs in the industry that have become well-recognized as source indicators; news articles and website excerpts touting the mark in connection with the applicant; examples of the mark in use on packaging, shopping bags, hangtags, and promotional materials; examples of various products featuring the mark; a declaration indicating substantial sales of products, packaging, or hangtags featuring the mark, as well as significant marketing expenditures relating to promotion of products featuring the repeating pattern. While this kind of evidence might be submitted to support a claim of acquired distinctiveness, it is also the kind of evidence that may support the submission of a swatch-type drawing, because it shows that the repeating-pattern mark is used in various ways on a variety of items and that the repeating pattern would be perceived as a source indicator and create in the minds of consumers the same commercial impression across that pattern’s various uses.
If the applicant has submitted a swatch-type drawing but the evidence of record does not establish that a swatch-type drawing is appropriate, the examining attorney must refuse registration on the ground that the application seeks registration of more than one mark. See TMEP §§1202.19(g)–(g)(ii).
Repeating-pattern marks are used as service marks in a variety of ways. For instance, a repeating-pattern mark could be displayed on a retail store’s façade, on a customer loyalty card, on advertising materials, or on shopping bags.
If a repeating pattern appears on elements in a service setting in a manner that makes a single commercial impression, such as a pattern that is displayed on the various architectural features or other fixtures of a retail outlet, a drawing of the setting should be submitted, along with a detailed description of the mark that specifies the location and manner of use of the repeating pattern. Cf. TMEP §1202.05(d)(ii) ("If color is used in a variety of ways, but in a setting that makes a single commercial impression, such as a retail outlet with various color features, a broken-line drawing of the setting must be submitted, with a detailed description of the mark claiming the color(s) and describing the location of the color(s).")
The drawing must depict in broken lines those elements of the environment that display the repeating pattern but are not claimed as a feature of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §807.08.
Otherwise, if the mark is used on a particular item, or is used in a similar manner on multiple items that are similar in form and function, and can thus be adequately represented by a depiction of a single item, a drawing consisting of the mark appearing on a single item is appropriate. See TMEP §§1202.19(a)(i)–(ii).
The conditions for accepting a swatch-type drawing for repeating-pattern marks used in connection with services are the same as those explained in TMEP §1202.19(a)(iii).
The mark description must accurately describe the mark. See TMEP §808.02. Thus, the description for a repeating-pattern mark must indicate that the mark consists of a pattern. Although the description must identify the various elements of the pattern, it is not necessary to describe their exact placement within the pattern; it is sufficient for the description to generally characterize the elements and indicate that they are repeated. See id.
In addition, the description must specify how the pattern will appear on the relevant items. Thus, if the pattern is applied only to a portion of the relevant goods, packaging, or other items, the description must specify that portion. If the pattern is repeated over the entire surface of the relevant items, the description must so indicate. And, if the pattern is displayed in various ways on the relevant items (see TMEP §1202.19(a)(iii)), then the mark description must include wording to that effect. For example, in the latter instance, the following description would be acceptable: "The mark consists of a repeating pattern of stars and circles used on various portions of the product packaging for the identified goods."
The mark description must also describe any portions of the mark that are shown in broken lines and thus are not claimed as a feature of the mark. See 37 C.F.R. §2.52(b)(4); TMEP §807.08. For repeating patterns featuring color, the application must include an appropriate color claim and the description must indicate where the claimed colors appear. 37 C.F.R. §2.52(b)(1).
The mark description for a repeating-pattern mark must always be printed on the registration certificate. See TMEP §808.03.
Generally, when the original drawing depicts the repeating pattern appearing on a particular object, amending the drawing to show the pattern appearing on a significantly different object will be considered a material alteration. Thus, if the original drawing shows the repeating pattern appearing on the outer surface of a purse, for example, it may not be amended to show the mark appearing on the handle of a walking cane.
However, if the mark will appear in a similar manner on similar items, so that a depiction of only one of the items is a substantially exact representation of the mark as used on all of the items, the applicant may amend the drawing from a depiction of one of the items to a depiction of another of the items, assuming the shape of the items is not claimed as a feature of the mark and the specimen of use or foreign registration certificate supports the amendment. See 37 C.F.R. §2.72; TMEP §807.13. For instance, it would not be a material alteration to amend a drawing that shows the pattern appearing on the handle of a spoon shown in broken lines to show the pattern on the handle of a fork shown in broken lines. However, any item depicted in the drawing must be consistent with the identification of goods or services. See TMEP §1202.19(f).
When the original drawing is a swatch-type drawing showing the elements of the pattern within a square, rectangle, or other generic geometric shape (see TMEP §1202.19(a)(iii)), the drawing may be amended to show the pattern appearing on a particular item, if necessary and otherwise appropriate. See TMEP §807.13. However, amending from a drawing showing the pattern on a particular object to a swatch-type drawing usually will be a material alteration, especially when the elements comprising the pattern are nondistinctive.
When the original drawing shows the repeating pattern displayed in a particular manner on an object, amending the drawing to show the pattern being displayed in a significantly different manner on the same object may be a material alteration. For instance, a drawing that shows the repeating pattern on the outer bill of a baseball cap may not be amended to show the pattern on the inner lining of the cap. However, a minor change to the placement of a repeating pattern on an object should not be considered a material alteration.
An applicant may not amend a mark description if the amendment would describe a materially different mark than what was depicted in the original drawing. See 37 C.F.R. §2.72; In re Thrifty Inc. 274 F.3d 1349, 1353, 61 USPQ2d 1121, 1124 (Fed. Cir. 2001) (finding applicant’s proposed amendment to the mark description was a material alteration of the drawing because the "multiple impressions created by the wide variety of objects sought to be covered under the proposed description differ significantly from the original mark of a color placed on a building").
For applications in which the original drawing is a swatch-type drawing (see TMEP §1202.19(a)(iii)) and the original mark description indicates that the pattern is used a variety of ways, an applicant may amend the mark description to indicate that the pattern appears in a particular manner on a particular item, in accordance with a corresponding drawing amendment. These amendments are not considered material alterations. In these instances, the applicant may also be required to amend the identification of goods or services to delete any items that are inconsistent with the drawing. See TMEP §1202.19(f).
For applications based on Section 44 or Section 66(a), any amendments must conform to the rules and procedures governing these types of applications. See, e.g., TMEP §§1011.01 ("substantially exact representation standard" for drawings in §44-based applications), 1011.03 (amendment of drawings in §44-based applications), 1904.02(j) (amendment of marks in §66(a)-based applications), 1904.02(k) (drawings and descriptions in §66(a)-based applications).
As with other types of marks, the specimen of use for a repeating-pattern mark must show use of the mark as depicted in the drawing and described in the mark description. See TMEP §§904, 904.07(a), 1301.04(g)(i).
When a repeating pattern is applied to a single item, and the drawing thus depicts the repeating pattern on that item (see TMEP §1202.19(a)(i)), the specimen should show the pattern displayed on the same item or a substantially similar item. In addition, the placement of the pattern on the object in the specimen should be consistent with the placement as depicted in the drawing and specified in the description.
When a repeating pattern is applied in the same manner to similar items and thus a drawing depicting one of the items is appropriate (see TMEP §1202.19(a)(ii)), the specimen of use need not show the item depicted in the drawing, assuming the shape of the item in the drawing is not claimed as a feature of the mark. However, the object shown in the specimen must be sufficiently similar to the item in the drawing, such that the drawing is a substantially exact representation of the mark as actually used. See TMEP §1202.19(a)(ii). In addition, if the mark is applied to goods, the good shown in the specimen must be encompassed by the identification of goods. Thus, if the identified goods are spoons, forks, and knives being tableware, and the drawing shows the repeating pattern appearing on the handle of a spoon shown in broken lines, a specimen showing the same pattern in the same manner on the handle of a fork would be acceptable. See TMEP §§1202.19(f)–(f)(ii) for a discussion of the relevant examination procedures when the identified goods or services are inconsistent with the drawing.
When the drawing is a swatch-type drawing, and the examining attorney has determined that the drawing is appropriate (see TMEP §1202.19(a)(iii)), a specimen showing the pattern appearing on a particular object should be considered to match the drawing if the overall commercial impression created by the pattern is the same.
The fact that the specimen shows the mark depicted in the drawing being used in a repetitive fashion on the relevant items is not, by itself, a sufficient basis for treating the applied-for mark as a repeating-pattern mark. There must be some indication in the mark description or drawing to indicate that the mark consists of a repeating pattern.
If necessary, examining attorneys may require additional specimens to determine whether the applied-for mark functions as a trademark or service mark for all of the identified goods or services. See 37 C.F.R. §2.61(b); TMEP §904.01(a). For example, additional specimens may be necessary when the identified goods include items that are significantly different from the goods shown in the originally submitted specimen, such that it is not clear how the mark is used on all of the goods.
The USPTO will not register an applied-for mark unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) ("Before there can be registration, there must be a trademark . . . ."); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) ("Registration presupposes the existence of a trademark to be registered."); TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See 15 U.S.C. §1127; TMEP §1202.
The examining attorney must determine whether a repeating-pattern mark functions as a trademark or service mark by reviewing the available evidence, including the specimen and any other materials of record. See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) ("Since the specimens of record show how the applied-for mark is actually used in commerce, we must primarily look to the specimens to see if the designation would be perceived as a source indicator. However, we may also consider other evidence bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.").
Not every designation that a party places on goods or packaging, or uses in connection with services, is an inherently distinctive source indicator, regardless of the party’s intentions when adopting the designation. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) ; In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) ("As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself."). Some designations are not capable of serving as a source indicator. See In re Eagle Crest, Inc., 96 USPQ2d at 1229; Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973) .
Because repeating patterns frequently serve an ornamental function in various contexts, they are often not inherently distinctive when applied to goods, packaging, or materials associated with services. Instead, consumers may perceive these patterns as nothing more than ornamentation or background matter serving no source-indicating function. Thus, determining whether a repeating-pattern mark is inherently distinctive and functions as a source indicator involves considering the impression created when the mark is used in connection with the identified goods or services. See In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) ("A critical element in determining whether matter sought to be registered is a trademark is the impression the matter makes on the relevant public. Thus . . . the critical inquiry is whether the asserted mark would be perceived as a source indicator. . . . To be a mark, the term must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods. . . . We determine whether this has been achieved by examining the specimens of use along with any other relevant material submitted by applicant during prosecution of the application.").
Relevant considerations when determining inherent distinctiveness include those discussed below.
Evidence showing that the repeating pattern in the applied-for mark is similar to, or a mere refinement or variation of, a common pattern or a pattern that is widely used on the relevant items, may support the conclusion that the applied-for mark is not inherently distinctive. See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977) .
On the other hand, if the nature of the repeating pattern is unique or unusual as applied to the relevant items, a finding of inherent distinctiveness may be appropriate. See Seabrook Foods, Inc., 568 F.2d at 1344, 196 USPQ at 291.
However, the mere fact that the applicant is the only user of the particular repeating pattern is not dispositive as to the inherent distinctiveness of a mark featuring that pattern. See In re E S Robbins Corp., 30 USPQ2d 1540, 1543 (TTAB 1992) ("If the concept of inherent distinctiveness was defined as meaning simply ‘one and only,’ then one could obtain a registration for a design which, while ‘unique’ in this sense, differed only slightly from the designs of other competing products and/or containers."). The examining attorney must weigh this factor together with any other relevant factors.
The examining attorney should consider whether the pattern creates a commercial impression distinct from any wording or other matter that may also appear on the relevant items. See Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344, 196 USPQ 289, 291 (C.C.P.A. 1977). If so, this weighs in favor of finding the pattern inherently distinctive.
If a repeating-pattern mark contains an element, such as arbitrary wording, which would be perceived as a source indicator if it were to appear by itself, then the relevant consumers may be more likely to perceive the repeating pattern as a source indicator.
Purchasers are unlikely to view a repeating-pattern mark as an indicator of source if the relevant industry practice is to use repeating patterns in an ornamental fashion with the relevant goods or services. However, if, because of common industry practice, consumers have come to view repeating patterns on the surface of the relevant goods, packaging, or other materials as an indicator of source, and the applied-for mark is more than common background matter, then a finding that the mark is inherently distinctive may be appropriate.
The type of item the mark is applied to affects whether consumers perceive the repeating pattern as a mark rather than merely as ornamental or other nondistinctive matter. For example, when repeating patterns appear on items such as clothing, curtains, pillows, bedding, carpet, furniture, and stationery, the patterns are likely to be perceived as decoration because those types of goods are typically purchased or used, at least in part, for their aesthetic appeal. On the other hand, if the type of item the mark is applied to does not usually feature decorative matter, or is not usually purchased or used for its decorative features, like power tools, industrial machinery, or surgical equipment, a repeating pattern may be more likely to be perceived as a source indicator.
When the applicant has sought registration of a repeating-pattern mark on the Principal Register without claiming acquired distinctiveness, and the examining attorney determines that the mark is not inherently distinctive, registration must be refused on the ground that the mark fails to function as a source indicator, citing Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The examining attorney must explain the specific reasons for the refusal and provide relevant supporting evidence. See TMEP §1202. The stated reason for refusal will usually be that the applied-for mark is merely ornamental as used on or in connection with the goods or services. However, in some instances, the applied-for repeating-pattern mark may be simply nondistinctive, serving neither an ornamental nor a source-indicating purpose. In either case, the same statutory bases apply.
If registration is sought on the Supplemental Register, but the examining attorney determines that the mark is incapable of serving as a source indicator, registration must be refused on that ground under Trademark Act §§23 and 45. 15 U.S.C. §§1091, 1127.
If an applied-for mark is capable of serving as a source indicator, the applicant may respond to the refusal by submitting a substitute specimen showing use of the mark as a trademark or service mark, amending to the Supplemental Register, or claiming acquired distinctiveness under Trademark Act Section 2(f), if otherwise appropriate. For repeating-pattern marks that are capable of serving as source indicators but are not inherently distinctive, evidence of five years’ use, by itself, is insufficient to show acquired distinctiveness. See TMEP §1212.05(a). That is, actual evidence showing that consumers have come to recognize the applied-for mark as a source indicator will be required to establish acquired distinctiveness. See id.
Furthermore, for repeating-pattern marks used on goods, any showing of acquired distinctiveness must be made with respect to all of the identified goods for which the examining attorney has determined the mark is not inherently distinctive. For repeating-pattern marks used in connection with services, the evidence of acquired distinctiveness must establish that the mark, as used on all of the relevant items, has come to be perceived as a source indicator for the identified services.
See TMEP §816 regarding amendment to the Supplemental Register and TMEP §§1212-1212.10 regarding claims of acquired distinctiveness.
The applicant may also submit evidence of secondary source to establish that a repeating-pattern mark primarily serves a source-indicating function rather than merely serving as ornamentation. As discussed in TMEP §1202.03(c), there are a number of acceptable types of evidence for showing secondary source, such as proof of ownership of a use-based U.S. registration on the Principal Register for the same mark covering other goods or services. However, evidence of a series of ornamental uses of a repeating-pattern mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark or service mark for the other goods or services must be shown. TMEP §1202.03(c); see also In re Astro-Gods Inc., 223 USPQ 621, 622-24 (TTAB 1984) .
When the drawing shows the repeating pattern appearing on an item, the examining attorney must determine whether all of the identified goods or services are consistent with the item depicted, such that the mark shown accurately reflects how the mark appears on all of the identified goods and services and could actually serve as a source indicator for them.
For example, in an application that depicts the mark as a repeating pattern appearing on the bill of a baseball cap shown in broken lines, the cap is not part of the mark, but the drawing nonetheless limits the mark to the particular manner of use shown. Thus, if the application identifies the goods as baseball caps, shoes, eyeglasses, and purses, the identified baseball caps are consistent with the drawing, but the identified shoes, eyeglasses, and purses are not, because the mark obviously cannot be applied to those goods in the manner depicted in the drawing. If, on the other hand, the drawing depicts a repeating pattern applied to the handle of a hand rake, any other similar type of implement with a handle that is listed in the identification of goods should be considered to be consistent with the drawing.
If the drawing shows the repeating-pattern mark appearing on packaging for goods, the identified goods should be considered consistent with the drawing if they could be sold in the packaging shown. For instance, if the packaging shown is a bottle, then goods that are not normally packaged in a bottle should be considered inconsistent with the nature of the mark as depicted in the drawing, assuming there is no evidence that the applicant’s goods actually are packaged in that manner.
The fact that an application identifies services, but contains a drawing showing the mark applied to a particular object, does not necessarily raise an issue of inconsistency. Marks of this nature may function as source indicators for services. For example, a repeating pattern applied in a particular manner to the exterior of an airplane could be perceived as a source indicator for airline transportation services. However, if the application identifies both goods and services, the examining attorney must consider whether the mark shown in the drawing could actually function as both a trademark for the identified goods and a service mark for the identified services.
The determination of whether all of the identified goods or services are consistent with the drawing is distinct from the determination of whether the drawing agrees with the specimen of record. See TMEP §1202.19(d). Thus, if the application contains specimens showing that the drawing is not a substantially exact representation of the mark as used on the goods or packaging, or in connection with the services, the examining attorney must also issue any applicable requirement or refusal on that basis. See TMEP §807.12(a).
If the examining attorney determines that any of the identified goods or services are inconsistent with the drawing, the examining attorney must refuse registration as to those goods or services on the ground that the mark, as depicted in the drawing, fails to function as a mark for them. Cf. TMEP §§1202.02(f)(i), 1202.02(f)(ii). The statutory bases for the refusal are Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127.
The applicant may overcome the refusal by deleting the inconsistent goods or services, or by submitting evidence that the mark, as depicted in the drawing, does in fact function as a mark for the relevant goods or services. In most instances, the applicant will be unable to overcome the refusal by amending the drawing to cover all of the identified goods or services because it will be impossible to do so using a single depiction of the mark and the necessary changes are likely to result in a material alteration of the mark on the original drawing. See TMEP §1202.19(c). In addition, dividing out the inconsistent goods or services typically is not an appropriate response option in these cases because the drawing in the child application would need to depict an essentially different mark, which would also be a material alteration of the mark in the original drawing.
As explained in TMEP §1202.19(a)(iii), a swatch-type drawing is acceptable only if the applicant has submitted sufficient evidence to establish that the mark is applied to various items but that these various uses of the repeating pattern nonetheless create the same commercial impression.
In the absence of the evidentiary showing discussed in TMEP §1202.19(a)(iii), a swatch-type drawing is deemed to encompass numerous versions of the mark, each of which may create a different commercial impression, and thus the examining attorney must refuse registration under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127, on the ground that the application seeks registration of more than one mark. See In re Int'l Flavors & Fragrances Inc., 183 F.3d 1361, 1366, 51 USPQ2d 1513, 1516 (Fed. Cir. 1999) ("[U]nder the Lanham Act and the rules promulgated thereunder, a trademark application may only seek to register a single mark."); TMEP §1214.01; cf. In re Hayes, 62 USPQ2d 1443, 1445 (TTAB 2002) (noting that a trademark application may only seek to register a single mark and affirming refusal of registration on the basis that applicant’s mark description described more than one mark); In re The Upper Deck Co., 59 USPQ2d 1688, 1689-91 (TTAB 2001) (affirming refusal to register a mark described as "a hologram device which is applied to . . . trading cards" because the mark could encompass many different holograms having various shapes, sizes, and contents, and thus the application sought to register more than a single mark); In re Elvis Presley Enters., 50 USPQ2d 1632, 1633-34 (TTAB 1999) (affirming refusal to register a mark described as "the likeness and image of Elvis Presley" because the drawing failed to convey a substantially exact representation of the mark and, given that the mark could encompass numerous likenesses of Elvis, the application sought to register more than a single mark).
In response to this refusal, the applicant may amend the swatch-type drawing to depict the mark on a particular item; amend the mark description to describe the placement of the mark on that item; and, if necessary, amend the identification to delete any goods or services that are inconsistent with the drawing (see TMEP §1202.19(f)).
The refusals discussed in TMEP §§1202.19(e)–(g)(ii) may also apply to applications based on Trademark Act §1(b), §44, or §66(a) if the information in the application or any other available evidence indicates that the applied-for mark fails to function as a trademark or service mark; that the identification includes goods or services that are inconsistent with the mark as depicted in the drawing; or that the application seeks registration of more than one mark. See TMEP §1202; cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, "it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark"); TMEP §1202.02(f)(i).
For §1(b) applications, if the examining attorney anticipates issuing a failure-to-function refusal once an allegation of use is filed, the examining attorney should advise the applicant of the potential refusal if otherwise issuing an Office action. See TMEP §1202. However, failure to provide an advisory does not preclude the examining attorney from subsequently issuing a refusal. See id.
With respect to applications based on §44 or §66(a), examining attorneys must adhere to the relevant rules and procedures governing these types of applications, including those pertaining to drawing amendments and acceptable response options. See, e.g., TMEP §§801.02(b) (Supplemental Register not an option for §66(a) requests for extension of protection), 1010 (proof of acquired distinctiveness in §44-based applications), 1011.01 ("substantially exact representation standard" for drawings in §44-based applications), 1011.03 (amendment of drawings in §44-based applications), 1904.02(g) (time period for issuing a refusal of a §66(a)-based application), 1904.02(j) (amendment of marks in §66(a)-based applications), 1904.02(k) (drawings and descriptions in §66(a)-based applications).
It is possible, although rare, that a repeating pattern applied to the surface of an item will serve a functional purpose. This could be a utilitarian function, which is essential to the use of the item or affects the cost or quality of the item, or an aesthetic function, which does not have a truly utilitarian function in terms of the item’s use or performance, but nonetheless provides a real and significant competitive advantage. See TMEP §§1202.02(a)(iii)(A), 1202.02(a)(vi). For example, a repeating pattern could function as camouflage for a product that requires concealment (utilitarian functionality). Or a repeating pattern could make a product more aesthetically desirable, beyond mere ornamentation, by allowing the product to be visually coordinated with a variety of other related items (aesthetic functionality). See Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531-1533, 32 USPQ2d 1120, 1122-1124 (Fed. Cir. 1994) (affirming TTAB’s determination that the color black on the surface of outboard motors is functional because, while it has no utilitarian effect on the mechanical purpose of the engines, it does provide other identifiable competitive advantages, including compatibility with a wide variety of boat colors and reduction in the perceived size of the engines). If the available evidence supports the conclusion that a repeating-pattern mark is functional, the examining attorney must refuse registration accordingly. See TMEP §§1202.02(a)–(a)(viii) regarding functionality and the procedures for refusing registration.
The foregoing guidance on repeating patterns also generally applies to marks consisting of random or fractal patterns, that is, patterns in which the relevant elements are not repeated in a set or easily recognized way. However, examining attorneys must carefully review the drawing, mark description, and specimen of use for this type of mark to ensure not only that the application accurately depicts and describes the mark, but also that the mark creates the impression of a single mark.
Registered Repeating-Pattern Marks
Example 1
U.S. Registration No. 3826587 (Supplemental Register)
Mark
Specimen
Mark Description: "The mark consists of a repeating pattern of hexagonal shapes printed or stitched on the inner lining of shoe uppers. The matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark on the goods."
Goods: Shoes, in International Class 25.
Note: Although the shape of the shoe in the drawing differs slightly from the shape of the shoe in the specimen, the drawing is a substantially exact representation of the mark as used on the goods.
Example 2
U.S. Registration No. 3679828 (Principal Register – §2(f))
Mark
Specimen
Mark Description: "The mark consists of a repetitive diamond pattern on the cloth speaker grill of a musical instrument amplifier. The dotted lines shown on the drawing are for purposes of positioning only and do not comprise a feature of the mark."
Goods: Musical instrument amplifiers, in International Class 9.
Note: The application for this mark included a large amount of evidence to establish that the mark had acquired distinctiveness as a source indicator, including samples of marketing materials, excerpts from publications, and numerous consumer declarations.
Example 3
U.S. Registration No. 3342382 (Principal Register - Cancelled)
Mark
Specimen
Mark Description: "The mark consists of a repeating pattern of ‘AV’ on the face of a watch."
Goods: Watches, in International Class 14.
Note: The drawing shows the outline of the watch in broken lines, but the mark description does not specify the meaning of the broken lines. As indicated in TMEP §§807.08 and 1202.19(b), descriptions of marks containing broken lines must indicate the significance of the lines.
Example 4
U.S. Registration No. 4100365 (Supplemental Register)
Mark
Mark Description: "The mark consists of a plaid design located on and covering the entire perimeter of the side border of a mattress, the plaid design comprising a repeat pattern no larger than approximately 1 to 1.6 inches in both its horizontal and vertical dimensions. The matter shown in dotted lines is not part of the mark but merely serves to show the placement of the mark on the goods."
Goods: Mattresses, in International Class 20.
Note: Although the entire shape in the drawing here is not depicted in broken lines, as indicated in TMEP §§807.08 and 1202.19(a)(i), broken lines must be used to indicate the shape of an item depicted in a drawing if the shape is not claimed as part of the mark.
Example 5
U.S. Registration No. 1251171 (Principal Register)
Mark
Mark Description: "The mark consists of a design showing the words ‘Rip-N-Zip’ repeated in a diagonal pattern along a strip extending across the upper portion of the multiwall bags."
Goods: Reclosable Multiwall Bags, in International Class 22.
Note: The drawing shows the outline of the goods in broken lines, but the mark description does not specify the meaning of the broken lines. As indicated in TMEP §§807.08 and 1202.19(a)(i), marks containing broken lines must indicate the significance of the lines (e.g., that they indicate matter that is not part of the mark).
Example 6
U.S. Registration No. 2963354 (Principal Register)
Mark
Specimen
Goods: Perfumery; cosmetics, in International Class 3.
Note: Here, the repeating pattern is not a common, widely used pattern, but is instead composed of a stylized depiction of the wording DIOR. Furthermore, the pattern is placed only on part of the goods, in a place where a trademark might appear. Although a repeated pattern often produces an ornamental effect, the repeated element here is distinctive and could serve as a source indicator if presented in a single instance, rather than being repeated. Accordingly, the mark is, as used on the goods, inherently distinctive. See TMEP §§1202.19(e)(i)–(e)(i)(E).
Although this registration does not include a mark description, under TMEP §§808.02 and 1202.19(b), a mark description for a repeating-pattern mark must accurately describe the elements that appear in the mark and indicate that they are repeated. In addition, to use a swatch-type drawing like the one shown here, the applicant must satisfy the requirements described in TMEP §1202.19(a)(iii). Otherwise, a drawing showing placement on the relevant item is required. See TMEP §1202.19(g)(ii).
Making Inherent Distinctiveness and Inconsistent Goods/Services Determinations
The following mock example is provided to illustrate concepts involved in determining whether a mark is inherently distinctive and whether the identified goods or services are consistent with the drawing. See TMEP §§1202.19(e)(i)–(e)(i)(E) and 1202.19(f) for additional information.
Mark
Mark Description: The mark consists of a repeated houndstooth pattern applied to the entire exterior surface of the side and end panels of a handbag. The matter shown in broken lines is not part of the mark and serves only to show the placement of the mark on the goods.
Goods: Handbags; purses; walking canes, in International Class 18.
Note: Although source-indicating matter is often displayed in a repetitive manner on the surface of handbags and purses, here the mark consists of a common pattern, houndstooth, which is widely used on clothing, fashion accessories, household items, and many other goods. There is nothing unusual or distinctive about the manner in which this common pattern is displayed or placed, and thus the pattern will likely be perceived as purely ornamental. Therefore, the mark is not inherently distinctive and does not function as a source indicator for the goods. See TMEP §§1202.19(e)(i)–(e)(i)(E).
In addition, some of the identified goods are inconsistent with the drawing. While the handbag shown in the drawing is not part of the mark, the drawing nonetheless limits the mark to the particular manner of use shown. The mark could be applied in the manner shown to handbags and purses, but not to walking canes. Therefore, it is appropriate to refuse registration of the mark as to "walking canes" on the ground that the mark, as depicted in the drawing, fails to function as a mark for those goods. See TMEP §§1202.19(f)–(f)(ii).
While the pattern shown in this mock example is not distinctive as depicted in the drawing, it is possible for a commonly used pattern to be inherently distinctive, or to otherwise acquire distinctiveness, if it is used in an unusual manner on the goods, such as when the pattern appears in a unique way on a particular portion of the goods.
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it–
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The provisions of 15 U.S.C. §1052(a) apply to both the Principal Register and the Supplemental Register.
Until June 19, 2017, the USPTO examined applications pursuant to the provision in Section 2(a) of the Trademark Act, 15 U.S.C §1052(a), that prohibited the registration of a mark that consists of or comprises matter that may disparage, or bring into contempt or disrepute, persons, institutions, beliefs, or national symbols. However, the Supreme Court held this provision of Section 2(a) discriminates based on the applicant’s viewpoint and struck it down as unconstitutional under the Free Speech Clause of the First Amendment in Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017).
In addition, until June 24, 2019, the USPTO examined applications pursuant to the provision in Section 2(a) that prohibited the registration of a mark that consists of or comprises immoral or scandalous matter. However, the Supreme Court held this provision of Section 2(a) also is viewpoint discriminatory and thus unconstitutional under the Free Speech Clause of the First Amendment in Iancu v. Brunetti, 139 S. Ct. 2294, 204 L. Ed. 2d 714, 2019 USPQ2d 232043.
Accordingly, that a mark may "disparage . . . or bring . . . into contempt, or disrepute" or that a mark "[c]onsists of or comprises immoral. . . or scandalous matter" are no longer valid grounds on which to refuse registration or cancel a registration. 15 U.S.C §1052(a).
In striking down these provisions in Section 2(a), the Supreme Court purposely refrained from extending its holdings to any other provisions in Section 2(a) or other sections of the Trademark Act that do not restrict trademark registration based on the applicant’s viewpoint. See, e.g., Iancu v. Brunetti, 139 S. Ct. at 2302 n.*, 2019 USPQ2d 232043, at *7 n.* ("Nor do we say anything about how to evaluate viewpoint-neutral restrictions on trademark registration . . . "). The TTAB has since rejected an applicant’s constitutional challenge to Section 2(a)’s "false suggestion" clause, explaining that the provision is viewpoint neutral and "directly furthers the goal of prevention of consumer deception in source-identifiers." In re ADCO Indus.– Techs, L.P., 2020 USPQ2d 53786, at *10 (TTAB 2020) (noting that "Congress acts well within its authority when it identifies certain types of source-identifiers as being particularly susceptible to deceptive use and enacts restrictions concerning them").
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness under §2(f) can obviate a refusal under §2(a) on the ground that the mark consists of or comprises deceptive matter. See Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ; In re Charles S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).
A deceptive mark may be comprised of: (1) a single deceptive term; (2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements ( see In re White Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) ; (3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use ( see Am. Speech-Language-Hearing Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984) ); (4) the phonetic equivalent of a deceptive term ( see In re Organik Technologies, Inc., 41 USPQ2d 1690, 1694 (TTAB 1997) ; Tanners' Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979); or (5) the foreign equivalent of any of the above ( see, e.g., Palm Bay Imps., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Although there is no published Board or Federal Circuit decision regarding whether a mark consisting solely of a design can be deceptive, if there is evidence to support such a refusal, it should be issued.
Deceptive marks may include marks that falsely describe the material content of a product ( see In re Intex Plastics Corp., 215 USPQ 1045, 1048 (TTAB 1982) ) and marks that are geographically deceptive ( see Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1076 (TTAB 1988) ; In re House of Windsor, Inc., 221 USPQ 53, 57 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984)). See TMEP §§1210.05-1210.06(b) regarding geographically deceptive marks.
However, marks containing a term identifying a material, ingredient, or feature should not be refused registration under §2(a) if the mark in its entirety would not be perceived as indicating that the goods contained that material or ingredient. For example, the mark COPY CALF was found not deceptive for wallets and billfolds of synthetic and plastic material made to simulate leather, because it was an obvious play on the expression "copy cat" and suggested to purchasers that the goods were imitations of items made of calf skin. See A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) . Note, however, the difference with such marks as TEXHYDE and SOFTHIDE, which were held deceptive as applied to synthetic fabric and imitation leather material, respectively. See Intex Plastics, 215 USPQ at 1048; Tanners' Council of Am., 204 USPQ at 154-55.
In addition, formatives and other grammatical variations of a term may not necessarily be deceptive in relation to the relevant goods. For example, "silky" is defined, inter alia, as "resembling silk." See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Thus, a mark containing the term SILKY would not be considered deceptive (but might be unregistrable under §2(e)(1)). Dictionary definitions of such terms should be carefully reviewed to determine the significance the term would have to prospective purchasers. For example, although the term GOLD would be considered deceptive for jewelry not made of gold, the term GOLDEN would not be deceptive.
The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:
In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir. 2009); In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).
If the first two inquiries set forth by the Federal Circuit in In re Budge Manufacturing Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (i.e., whether a mark is misdescriptive of the goods or services and whether prospective purchasers are likely to believe the misdescription) are answered affirmatively, the mark is deceptively misdescriptive of the goods or services under §2(e)(1) of the Trademark Act. See TMEP §1209.04 regarding deceptively misdescriptive marks.
The third inquiry, whether the misdescription is likely to affect the decision to purchase, distinguishes marks that are deceptive under §2(a) of the Act from marks that are deceptively misdescriptive under §2(e)(1). To be deceptively misdescriptive under §2(e)(1), the misdescription must be deceptive in some way; i.e., consumers of the goods or services are likely to believe the misrepresentation. TMEP §1209.04 (citing Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1011 (TTAB 1984)). That is, the misdescription concerns a feature that would be relevant to the decision to purchase the goods or use the services. In re Shniberg, 79 USPQ2d 1309, 1311 (TTAB 2006); see In re Hinton, 116 USPQ2d 1051, 1052, 1055 (TTAB 2015) "If the misdescription is more than simply a relevant factor that may be considered in purchasing decisions but is a material factor, the mark would also be deceptive" under §2(a). In re Shniberg, 79 USPQ2d at 1311; see In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) See TMEP §1209.04 regarding the believability requirement for deceptive misdescriptiveness and §1203.02(d) regarding determining materiality.
If it is difficult to determine whether misdescriptive matter would materially affect a decision to purchase, the examining attorney should refuse registration under §2(a) and alternatively under §2(e)(1). See In re Canine Caviar Pet Foods, Inc., 126 USPQ2d 1590 (TTAB 2018); In re White Jasmine LLC, 106 USPQ2d at 1385; In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002); see also R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ 276 (C.C.P.A. 1964). See TMEP §1203.02(e) regarding procedures for issuing deceptiveness refusals under §2(a).
Marks that are deceptive under §2(a) are unregistrable on either the Principal Register or the Supplemental Register, whereas marks that are deceptively misdescriptive under §2(e)(1) may be registrable on the Principal Register with a showing of acquired distinctiveness under §2(f), 15 U.S.C. §1052(f), or on the Supplemental Register, if appropriate.
See TMEP §1210.05(d) regarding the distinction between marks comprising deceptive matter under §2(a) and matter that is primarily geographically deceptively misdescriptive under §2(e)(3).
To establish a prima facie case of deceptiveness, the examining attorney must provide sufficient evidence that the misdescriptive quality or characteristic would be a material factor in the purchasing decision of a significant portion of the relevant consumers. To do so, the examining attorney must provide evidence that the misdescriptive quality or characteristic would make the product or service more appealing or desirable to prospective purchasers. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992) ). A product or service is usually more desirable because of objective standards or criteria that provide an objective inducement to purchase the goods and/or services beyond that of mere personal preference.
In assessing whether a misdescription would affect the decision to purchase, the following are examples (not a comprehensive list) of the type of objective criteria that should be used to analyze whether a term is a material factor. The evidence may often point to more than one characteristic, thereby strengthening the examining attorney’s prima facie case. For example, the evidence may show that goods deemed "organic" because they are produced in compliance with objective criteria can also be more costly, provide health benefits, and satisfy a social policy of reducing the impact on the environment by utilizing chemical-free growing practices. The evidence also must suffice to indicate that the misdescriptive quality or characteristic would affect the purchasing decision of a significant portion of the relevant consumers. In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 90 USPQ2d 1489, 1493 (Fed. Cir. 2009). Generally, evidence of the objective inducement to purchase supports a presumption that a significant portion of the relevant consumers would likely be deceived.
Superior Quality - The evidence must support a finding that goods or services that contain or feature the misdescriptive term are superior in quality to similar goods and/or services that do not. For example, silk can be shown to be a more luxurious and expensive material because of the difficulty in making silk, its unique feel, and its breathability. Similarly, cedar wood can be shown to have superior durability and resistance to decay.
Enhanced Performance or Function - The evidence must support a finding that goods possessing the characteristic or feature at issue are superior to those that do not. For example, certain wood species are naturally resistant to termite attack or may be more durable than others. There might also be evidence of an increasing interest in reducing the potential leaching of chemicals from treated wood into the environment.
Difference in Price - Evidence of a price differential between items that do and those that do not possess the feature or characteristic described by the misdescriptive term may be enough to support a §2(a) refusal, depending upon the nature of the goods or services. It is also important to remember that because a difference in price is relative to the goods and/or services in a particular industry, a particular term may be deceptive for goods and services that are not typically thought of as luxury items.
Health Benefit - The evidence must establish a belief that the feature or characteristic provides a health benefit.
Religious Practice or Social Policy - The evidence must show that the religious practice or social policy has definable recognized criteria for compliance in order to support a finding of deceptiveness when the criteria are not adhered to by the applicant. For example, a body of Jewish law deals with what foods can and cannot be eaten and how those foods must be prepared and eaten. The term "kosher" refers to food prepared in accordance with these standards as well as to the selling or serving of such food. See The American Heritage® Dictionary of the English Language: Fourth Ed. 2000. Another example is the term "vegan," which is defined as someone who eats plant products only and who uses no products derived from animals, such as fur or leather. Id.
The evidence necessary to establish deceptiveness can come from the same sources used to show that the term is misdescriptive. Internet searches that combine the deceptive term with terms such as "desirable," "superior," "premium," "better quality," "sought after," "more expensive," or "established standards" may be useful in seeking evidence to support the second and third prongs of the test.
Applicant’s own advertising - in the form of specimens, brochures, web pages, press releases, or product and service information sheets - may provide the best evidence of deceptiveness. Moreover, the examining attorney should make of record any instances where the applicant attempts to benefit from the potentially deceptive term and where the advertising includes false assertions related to the deceptive wording. Although not a requirement for a deceptive refusal, proof of an actual intent to deceive may be considered strong evidence of deceptiveness.
The types of objective criteria discussed above can be contrasted with mere personal preferences for which the requisite evidentiary support generally cannot be found to establish materiality. For example, SPEARMINT for chewing gum, LAVENDER for dish soap, and BLUE for bicycles refer to flavor, scent, and color features that, in those contexts, most likely reflect mere personal preferences which would not be considered material for purposes of a deceptiveness refusal.
Similarly, personal preferences regarding types of cuisine served at restaurants (e.g. , SEAFOOD or PIZZA) generally do not establish materiality absent evidence that the type of cuisine meets some objective criteria more in line with those listed above, such as for VEGAN or KOSHER.
Whether the requisite evidentiary support can be found to establish that the use of such terms in connection with goods/services that do not contain or feature the characteristic is deceptively misdescriptive under §2(e)(1) must be determined on a case-by-case basis.
If there is evidence in the record clearly indicating that the mark or a term(s) in the mark is misdescriptive (e.g. , the specimen or language in the identification indicates that the goods/services do not have the relevant feature or characteristic), the examining attorney must determine whether the misdescription is believable and material and do the following:
When a mark comprises or contains descriptive wording, but it is not clear whether the goods/services possess the relevant feature or characteristic, the examining attorney must first determine whether such feature or characteristic would be believable and material to the decision to purchase.
If the potential misdescription would not be believable, no refusal under either §2(a) or §2(e)(1) should be made. If the application is otherwise in condition for publication, the examining attorney should approve the mark for publication. Otherwise, the examining attorney should issue an Office action containing all other relevant refusals and/or requirements.
If the goods possess the relevant feature or characteristic and the feature or characteristic referenced by the mark would be believable and material, the identification must include the feature or characteristic in order to resolve the ambiguity between the mark and the identification of goods/services. The identification must be amended even if the record indicates elsewhere that the goods/services contain the feature or characteristic. Therefore, if the application could otherwise be put in condition for approval for publication by an examiner’s amendment ( see TMEP §707), to expedite prosecution, the examining attorney should:
If the examining attorney is unable to reach the applicant or cannot obtain authorization for an examiner’s amendment, or if an Office action is otherwise necessary to make substantive refusals or requirements that cannot be satisfied by examiner’s amendment, the examining attorney must:
If the applicant responds that the goods/services possess the feature or characteristic or amends the identification to include the feature or characteristic, the examining attorney must issue a final Office action, assuming that the application is otherwise in condition for final action, as to the descriptiveness refusal (or disclaimer requirement, if not provided), identification requirement (if applicable and not amended), and any other relevant refusals and/or requirements, as appropriate.
If the applicant responds that the goods/services do not possess the feature or characteristic, the examining attorney must withdraw the §2(e)(1) descriptiveness refusal (or disclaimer requirement), as well as the identification requirement (if applicable), and issue a subsequent nonfinal Office action dependent on whether the misdescription would be believable and material:
If the applicant does not respond to the information request and does not amend the identification to include the feature or characteristic, the examining attorney must:
See, e.g., In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive, deceptively misdescriptive, or, alternatively, merely descriptive for wine, after the applicant failed to fully respond to the examining attorney’s inquiries regarding the origin and certification of applicant’s goods); In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB 2008) (holding NORMANDIE CAMEMBERT primarily geographically descriptive or, in the alternative, primarily geographically deceptively misdescriptive for cheese; the applicant failed to respond to a 37 C.F.R. §2.61(b) information request as to the origin of the goods).
Generally, an applicant may avoid or overcome a deceptiveness refusal by amending the identification of goods or services, if accurate, to include the potentially deceptive term. For deceptiveness refusals based on the material composition of the goods, if the applicant amends the identification to include the potentially deceptive term, the USPTO will rely on the presumption that the goods contain a sufficient amount of the material to obviate deceptiveness; there is no requirement to substantiate the amount or percentage of the material or feature in the goods. Thus, the applicant may amend "ties" to "silk ties," "milk and cheese" to "organic milk and cheese," and "jewelry" to "gold jewelry" or to "jewelry made in whole or significant part of gold."
The Office construes the wording "made in significant part of" as indicating that the goods contain a sufficient amount of the named ingredient/material composition to meet the standard for use of the term in the relevant industry. In the case of "coats made in significant part of leather," such wording would be construed to mean that the "coats" contain a sufficient amount of leather to be called "leather coats" in the relevant industry. However, the wording "coats made in part of leather" is not acceptable because, although the goods may contain some leather, it may not be an amount sufficient for the goods to be called "leather coats" in the relevant industry.
Note, however, that amending the identification to exclude goods made from the named ingredient or material composition will not avoid or overcome a deceptiveness refusal.
Amending an identification of services to add "featuring" or "including" a material term (e.g. , "restaurants featuring organic cuisine" and "retail furniture stores including leather furniture") generally is sufficient to obviate deceptiveness. For example, as long as the identification indicates that the restaurant provides organic cuisine, or the furniture store sells leather furniture, there is no deception even if other types of food or furniture are also available.
Applicants may attempt to overcome a §2(a) refusal by providing evidence that applicant’s advertising, or other means, would make consumers aware of the misdescription. Neither evidence regarding advertising, labeling, or extent of use, nor information found on the specimens, can negate the misdescriptiveness with regard to use of the mark in relation to the goods or services. In addition, an applicant’s anecdotal or past practices and "explanatory statements in advertising or on labels which purchasers may or may not note and which may or may not always be provided" are of little value in the deceptiveness analysis. See In re Budge Mfg. Co., 857 F.2d 773, 775-76, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988).
However, in some cases, the applicant may be able to provide credible evidence that consumers would not expect goods sold under a certain mark to actually consist of or contain the feature or characteristic named in the mark. See, e.g., In re Robert Simmons, Inc.,192 USPQ 331 (TTAB 1976)(holding that WHITE SABLE is not deceptive on artist's paint brushes).
The argument that there is no deception because consumers will immediately discern the true nature of the goods and/or services when they encounter them is not persuasive. Deception can attach prior to seeing or encountering the goods or services, for example, based on advertising over the radio or Internet or via word of mouth. See In re ALP of S. Beach, Inc., 79 USPQ2d 1009, 1014 (TTAB 2006) .
As noted above, marks that are deceptive under §2(a) are never registrable on either the Principal Register, even under §2(f) or the Supplemental Register. However, applicants may present evidence of a similar nature to what is often submitted for acquired distinctiveness, such as declarations regarding how the mark is perceived by consumers, as rebuttal evidence to the prima facie case, in an effort to overcome one or all of the prongs of the §2(a) test. See In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235, 1238 (TTAB 1989) . Note that merely relying on the length of use, without providing other information or evidence, would never be sufficient to overcome a §2(a) refusal. Moreover, priority of use cannot overcome a deceptiveness refusal. In re AOP LLC, 107 USPQ2d 1644, 1650 n.6 (TTAB 2013) .
The fact that only those knowledgeable in the relevant trade, and not average purchasers, would be deceived does not preclude a finding that a mark comprises deceptive matter. In re House of Windsor, Inc., 223 USPQ 191, 192 (TTAB 1984) .
In the following cases, proposed marks were determined to be deceptive, under §2(a): In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988), aff’g8 USPQ2d 1790 (TTAB 1987) (holding LOVEE LAMB deceptive for seat covers not made of lambskin); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (holding AOP deceptive for wine, where the term is used by members of the European Union to designate a particular quality and geographical origin of wine, when applicant is not the entity that administers the designation and the goods do not necessarily originate in Europe); In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) (holding the term WHITE in the proposed mark WHITE JASMINE deceptive for tea that did not include white tea, where the evidence established that consumers perceive that white tea has desirable health benefits); In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (holding a mark consisting of the alpha symbol and letters "CU" deceptive for dietary supplements not containing copper, a common ingredient in dietary supplements, which evidence showed is referred to as CU); In re ALP of S. Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (CAFETERIA (stylized) held deceptive as used in connection with "restaurants providing full service to sit-down patrons, excluding cafeteria-style restaurants"); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (holding SUPER SILK deceptive for "clothing, namely dress shirts and sport shirts made of silk-like fabric"); In re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for clothing and textiles made from cotton that is neither from an organically grown plant nor free of chemical processing or treatment, notwithstanding applicant’s assertions that the goods are manufactured by a process that avoids the use of chemical bleaches, because the identification of goods was broad enough to include textiles and clothing manufactured with chemical processes or dyes); In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694 (TTAB 1992) (holding LONDON LONDON deceptive for clothing having no connection with London); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989) (holding PERRY NEW YORK and design of New York City skyline deceptive for clothing originating in North Carolina, in view of the renown of New York City in the apparel industry); Stabilisierungsfonds fur Wein v. Peter Meyer Winery GmbH, 9 USPQ2d 1073, 1075 (TTAB 1988) (holding GOLDENER TROPFEN deceptive for wines, in view of evidence of the international renown of the Goldtropfchen vineyard of West Germany, finding that the purchasing public would be likely to think, mistakenly, that applicant’s wines were produced from grapes grown there in accordance with German wine laws and regulations); Bureau Nat’l Interprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610, 1616 (TTAB 1988) (holding COLAGNAC deceptive for cola-flavored liqueur containing Spanish brandy, concluding that purchasers were likely to believe that applicant’s goods contained COGNAC brandy); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (holding SILKEASE deceptive as applied to clothing not made of silk); In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied,223 USPQ 191 (TTAB 1984) (holding BAHIA deceptive as applied to cigars having no connection with the Bahia province of Brazil, the record indicating that tobacco and cigars are important products in the Bahia region); Evans Prods. Co. v. Boise Cascade Corp., 218 USPQ 160 (TTAB 1983) (holding CEDAR RIDGE deceptive for embossed hardboard siding not made of cedar); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982) (holding TEXHYDE deceptive as applied to synthetic fabric for use in the manufacture of furniture, upholstery, luggage, and the like); Tanners’ Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150 (TTAB 1979) (holding SOFTHIDE deceptive for imitation leather material); In re Salem China Co., 157 USPQ 600 (TTAB 1968) (holding AMERICAN LIMOGES, used on dinnerware that was neither made in Limoges, France, nor made from Limoges clay, deceptive because of the association of Limoges with fine quality china); Co. of Cutlers of Hallamshire in the Cnty. of York v. Regent-Sheffield, Ltd., 155 USPQ 597 (TTAB 1967) (holding SHEFFIELD, used on cutlery not made in Sheffield, England, deceptive because of the renowned status of Sheffield in relation to cutlery); In re U.S. Plywood Corp., 138 USPQ 403 (TTAB 1963) (holding IVORY WOOD, for lumber and timber products, deceptive since the goods were not made of ivorywood nor did they contain an ivorywood pattern).
Marks were found not to be deceptive in the following cases: In re Tapco Int’l Corp., 122 USPQ2d 1369 (TTAB 2017) (holding KLEER MOULDINGS and KLEER TRIMBOARD not deceptive, because there was no evidence as to the likely consumer perception of the term "clear" (or KLEER) when used in connection with the identified PVC building products and thus the record did not establish that the term misdescribes the goods); Philip Morris Inc. v. Reemtsma Cigarettenfabriken GmbH, 14 USPQ2d 1487 (TTAB 1990) (holding PARK AVENUE neither deceptive nor geographically deceptively misdescriptive as applied to applicant’s cigarettes and smoking tobacco, finding no goods/place association between Park Avenue in New York City, on which opposer’s world headquarters was located, and tobacco products); In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235 (TTAB 1989) (holding WOOLRICH for clothing not made of wool not to be deceptive under §2(a)); In re Fortune Star Prods. Corp., 217 USPQ 277 (TTAB 1982) (holding NIPPON, for radios, televisions, and the like, not deceptive in relation to the goods because, although the applicant was an American firm, the goods were actually made in Japan); In re Sweden Freezer Mfg. Co., 159 USPQ 246 (TTAB 1968) (holding SWEDEN and design, for which registration was sought under §2(f) for external artificial kidney units, not deceptive, finding the case to be in the category "where a geographical trademark may involve a degree of untruth but the deception may be perfectly innocent, harmless or negligible"); A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962) (holding COPY CALF, for wallets and billfolds of synthetic and plastic material made to simulate leather, not deceptive, noting that the mark, as an obvious play on the expression "copy cat," suggested to purchasers that the goods were imitations of items made of calf skin).
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), bars the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, falsely suggests a connection with them.
Section 2(a) is distinctly different from §2(d), 15 U.S.C. §1052(d), for which the relevant test is likelihood of confusion. In University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1375-76, 217 USPQ 505, 508-09 (Fed. Cir. 1983) (footnotes omitted), aff’g 213 USPQ 594 (TTAB 1982), the Court of Appeals for the Federal Circuit noted as follows:
A reading of the legislative history with respect to what became §2(a) shows that the drafters were concerned with protecting the name of an individual or institution which was not a technical "trademark" or "trade name" upon which an objection could be made under §2(d). . . .
Although not articulated as such, it appears that the drafters sought by §2(a) to embrace concepts of the right to privacy, an area of the law then in an embryonic state. Our review of case law discloses that the elements of a claim of invasion of one’s privacy have emerged as distinctly different from those of trademark or trade name infringement. There may be no likelihood of such confusion as to the source of goods even under a theory of "sponsorship" or "endorsement," and, nevertheless, one’s right of privacy, or the related right of publicity, may be violated.
The right to privacy protects a party’s control over the use of its identity or "persona." See U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *20 (TTAB 2021) (quoting In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643 (TTAB 2015)). A party acquires a protectible interest in a name or equivalent designation under §2(a) where the name or designation is unmistakably associated with, and points uniquely to, that party’s personality or "persona." Univ. of Notre Dame du Lac, 703 F.2d at 1376-77, 217 USPQ at 509; In re ADCO Indus. – Techs. L.P. , 2020 USPQ2d 53786, at *3-4 (TTAB 2020) (citing In re Nieves & Nieves LLC, 113 USPQ2d at 1643). A party’s interest in a name or designation does not depend upon adoption and use as a technical trademark or trade name. Univ. of Notre Dame du Lac, 703 F.2d at 1375-77, 217 USPQ at 508-09; Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985). Section 2(a) protection is intended primarily to prevent the unauthorized use of the persona of a person or institution and not to protect the public. In re Int’l Watchman, Inc., 2021 USPQ2d 1171, at *3 (TTAB 2021) (quoting Bridgestone/Firestone Rsch. Inc. v. Auto. Club De L’Ouest De La Fr., 245 F.3d 1359, 1363, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001)).
Moreover, a mark does not have to comprise a person’s full or correct name to be unregistrable; a nickname or other designation by which a person is known by the public may be unregistrable under this provision of the Act. See In re Sauer, 27 USPQ2d 1073, 1074 (TTAB 1993) (finding that "Bo Jackson has achieved great fame and notoriety, so that when his nickname is used as part of the ‘Bo Ball’ and design mark on applicant’s goods, purchasers will likely make a connection between him and applicant’s products"); see also Buffett, 226 USPQ at 430 (finding evidence of record "sufficient to raise a genuine issue of material fact as to whether the term ‘MARGARITAVILLE’ is so uniquely and unmistakably associated with opposer as to constitute opposer’s name or identity such that when applicant’s mark is used in connection with its [restaurant] services, a connection with opposer would be assumed").
See TMEP §§1203.03(b)–1203.03(b)(iii) regarding false suggestion of a connection.
See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983), concerning the various forms of identity which have been protected under the rights of privacy and publicity.
Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), protects, inter alia, "persons, living or dead."
Section 45 of the Act, 15 U.S.C. §1127, defines "person" and "juristic person" as follows:
The term "person" and any other word or term used to designate the applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this Act includes a juristic person as well as a natural person. The term "juristic person" includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.
The term "persons" in §2(a) refers to real persons, not fictitious characters. It also encompasses groups of persons. See Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017). With respect to natural persons, they may be living or dead. However, §2(a) may not be applicable with regard to a deceased person when there is no longer anyone entitled to assert a proprietary right or right of privacy. In re MC MC S.r.l., 88 USPQ2d 1378 (TTAB 2008) (holding MARIA CALLAS not to falsely suggest a connection with deceased opera singer Maria Callas); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with deceased artist Leonardo Da Vinci). See TMEP §1203.03(b)(i) regarding elements of a §2(a) false suggestion of a connection refusal.
In the case of a mark comprising the name of a deceased natural person, the "right to the use of a designation which points uniquely to his or her persona may not be protected under Section 2(a) after his or her death unless heirs or other successors are entitled to assert that right." U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *20 (TTAB 2021) (quoting In re MC MC S.r.l., 88 USPQ2d at 1380). A key consideration is "whether or not there is someone (this may be a natural person, estate, or juristic entity) with rights in the name." In re MC MC S.r.l., 88 USPQ2d at 1380. Any doubt regarding the existence of heirs or successors with such rights must be resolved in favor of the applicant. See id., at 1381.
In addition to natural persons, §2(a) includes juristic persons, that is, legally created entities such as firms, corporations, unions, associations, or any other organizations capable of suing and being sued in a court of law. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969); Popular Merch. Co. v. "21" Club, Inc., 343 F.2d 1011, 145 USPQ 203 (C.C.P.A. 1965); John Walker & Sons, Ltd. v. Am. Tobacco Co., 110 USPQ 249 (Comm’r Pats. 1956); Copacabana, Inc. v. Breslauer, 101 USPQ 467 (Comm’r Pats. 1954). Juristic persons do not have to be well known to be protected from the registration of a mark that falsely suggests a connection with them. See generally Gavel Club v. Toastmasters Int’l,127 USPQ 88, 94 (TTAB 1960) (noting that §2(a) protection is not limited to large, well known, or nationally recognized institutions). However, there must be a legal successor to assert the rights of a defunct juristic person or otherwise those rights are extinguished when the juristic person becomes bankrupt or ceases to exist without an assignment of interest to another. Pierce-Arrow Soc’y, 2019 USPQ2d 471774, at *6-7 (TTAB 2019) (following In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998), overruled on other grounds, In re WNBA Enters., LLC, 70 USPQ2d 1153 (TTAB 2003)).
Section 45 of the Act, 15 U.S.C. §1127, also defines "person" to include the United States and its agencies and instrumentalities, as well as any state:
The term "person" also includes the United States, any agency or instrumentality thereof, or any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States. The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this Act in the same manner and to the same extent as any nongovernmental entity.
The term "person" also includes any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this Act in the same manner and to the same extent as any non-governmental entity.
It is well settled that the U.S. government is a "person" within the meaning of §2(a). 15 U.S.C. §1127; FBI v. Societe: "M.Bril & Co.", 172 USPQ 310, 313 (TTAB 1971). Therefore, the common names of, and acronyms for, U.S. government agencies and instrumentalities are considered persons. See In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506-08 (TTAB 2009) (stating the statutory definition of "person" includes the United States and any agency or instrumentality thereof and concluding that "[t]he only entity the name ‘U.S. Customs Service’ could possibly identify is the government agency" formerly known as the U.S. Customs Service and now known as U.S. Customs and Border Protection); NASA v. Record Chem. Co., 185 USPQ 563, 566 (TTAB 1975) (finding the National Aeronautics and Space Administration (NASA) is a juristic person); FBI, 172 USPQ at 313 (noting the Federal Bureau of Investigation (FBI) is a juristic person).
The term "institution" has been broadly construed. See In re Shinnecock Smoke Shop, 571 F.3d 1171, 1173, 91 USPQ2d 1218, 1219 (Fed. Cir. 2009) ("[T]he ordinary meaning of ‘institution’ suggests the term is broad enough to include a self-governing Indian nation," quoting Black's Law Dictionary 813, 1133 (8th ed. 2004), which defined "institution" as "[a]n established organization," and defined "organization" as a "body of persons . . . formed for a common purpose"); In re Int’l Watchman, Inc., 2021 USPQ2d 1171, at *9-11 (TTAB 2021) (finding the North Atlantic Treaty Organization, which is an intergovernmental organization and military alliance of the United States and other North American and European countries, "qualifies as an 'institution' under Section 2(a)"); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *15 (TTAB 2021) ("the record in this case supports the finding previously made by the Board that ‘the entire organization which comprises the Olympic Games, as a whole, qualifies as an ‘institution’ within the meaning of Section 2(a) of the Trademark Act’") (quoting In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004) ("each federally recognized Apache tribe is necessarily either a juristic person or an institution").
In addition to qualifying as a person, United States government agencies and instrumentalities, as identified by their common names and acronyms, also may be considered institutions within the meaning of §2(a). See In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 (TTAB 2009) ("Institutions, as used in Section 2(a), include government agencies."); In re Cotter & Co., 228 USPQ 202, 204-05 (TTAB 1985) (finding the United States Military Academy is an institution and West Point or Westpoint "has come to be solely associated with and points uniquely to the United States Military Academy"). The common names of, and acronyms and terms for, United States government programs may also be considered institutions, depending on the evidence of record. See In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1285-86 (TTAB 1997) (finding "NAFTA [the acronym for the North American Free Trade Agreement] is an institution, in the same way that the United Nations is an institution," and noting that the "legislative history . . . indicates that the reference to an ‘institution’ in Section 2(a) was designed to have an expansive scope."); NASA v. Record Chem. Co., 185 USPQ 563, 565 (TTAB 1975) (finding NASA’s Apollo space program is an institution).
Institutions do not have to be large, well known, or "national" to be protected from the registration of a mark that falsely suggests a connection with them. Gavel Club v. Toastmasters Int’l, 127 USPQ 88, 94 (TTAB 1960).
While the §2(a) prohibition against the registration of matter that may falsely suggest a connection with institutions may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01 and Appendix C (setting forth a nonexhaustive list of U.S. statutes protecting designations of certain government agencies and instrumentalities).
A "national symbol" is subject matter of unique and special significance that, because of its meaning, appearance, and/or sound, immediately suggests or refers to the country for which it stands. In re Consol. Foods Corp., 187 USPQ 63, 64 (TTAB 1975) (noting national symbols include the bald eagle, Statue of Liberty, designation "Uncle Sam" and the unique human representation thereof, the heraldry and shield designs used in governmental offices, and certain uses of the letters "U.S."). National symbols include the symbols of foreign countries as well as those of the United States. In re Anti-Communist World Freedom Cong., Inc., 161 USPQ 304, 305 (TTAB 1969) .
"National symbols" cannot be equated with the "insignia" of nations, which are prohibited from registration under §2(b).
The Act . . . does not put national symbols on a par with the flag, coat of arms, or other insignia of the United States, which may not in any event be made the subject matter of a trade or service mark. With regard to national symbols the statute provides merely that they shall not be . . . used as falsely to suggest a connection between the holder of the mark and the symbol.
Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908, 127 USPQ 312, 323 (E.D. Ark. 1960). See TMEP §1204 regarding insignia.
Trademark Act Section 2(a) does not prohibit registration of marks comprising national symbols; it only prohibits registration of matter that may falsely suggest a connection with them. Liberty Mut. Ins. Co., 185 F. Supp. at 908, 127 USPQ at 323 (finding marks comprising portion of the Statue of Liberty not to falsely suggest a connection with the Statue of Liberty or the United States government, the Court "[a]ssuming without deciding" that the statue is a national symbol).
Some designations have been held to be national symbols within the meaning of §2(a). E.g., In re Anti-Communist World Freedom Cong., 161 USPQ at 304 (holding a representation of a hammer and sickle to be a national symbol of the Union of Soviet Socialist Republics (U.S.S.R.)); In re Nat'l Collection & Credit Control, Inc.,152 USPQ 200, 201 n.2 (TTAB 1966) ("The American or bald eagle with wings extended is a well-known national symbol or emblem of the United States").
Other designations have been held not to be national symbols within the meaning of §2(a). E.g., NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671 (TTAB 1987) (holding SPACE SHUTTLE not to constitute a national symbol on the evidence of record, the Board also finding "shuttle" to be a generic term for a space vehicle or system); Jacobs v. Int'l Multifoods Corp., 211 USPQ 165, 170-71 (TTAB 1981) , aff’d on other grounds, 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982) ("[H]istorical events such as the ‘BOSTON TEA PARTY’ . . ., although undoubtedly associated with the American heritage, do not take on that unique and special significance of a ‘national symbol’ designed to be equated with and associated with a particular country."); In re Mohawk Air Serv. Inc., 196 USPQ 851, 854 (TTAB 1977) (stating MOHAWK is not immediately suggestive of the United States and, therefore, not a national symbol); In re Consol. Foods Corp., 187 USPQ 63 (TTAB 1975) (holding OSS, the acronym for the Office of Strategic Services, not to constitute a national symbol); In re Gen. Mills, Inc., 169 USPQ 244 (TTAB 1971) (finding UNION JACK, which applicant was using on packages of frozen fish marked "English cut cod" and in its restaurant near representations of the British national flag, did not suggest a particular country, the Board noting that it could consider only the matter for which registration was sought).
The name of a country is not a national symbol within the meaning of §2(a) of the Trademark Act nor does use of the name of a country as a mark, by itself, amount to deception or a "false connection" under §2(a). In re Fortune Star Prods. Corp., 217 USPQ 277, 277 (TTAB 1982) (citing In re Sweden Freezer Mfg. Co., 159 USPQ 246, 248-49 (TTAB 1968)).
The common names of, and acronyms for, government agencies and instrumentalities are not considered to be national symbols. In re Consol. Foods, 187 USPQ at 64 (holding OSS, acronym for the Office of Strategic Services, not a national symbol but rather merely designates a particular and long-defunct government agency).
While the prohibition of §2(a) against the registration of matter that may falsely suggest a connection with national symbols may not be applicable to a particular designation, many names, acronyms, titles, terms, and symbols are protected by other statutes or rules. See TMEP §1205.01 and Appendix C.
Section 2(a) prohibits the registration of a mark that consists of or comprises matter that may falsely suggest a connection with persons, institutions, beliefs, or national symbols. See TMEP §1203.03(a)(i) regarding persons, TMEP §1203.03(a)(ii) regarding institutions, TMEP §1203.03(a)(iii) regarding national symbols, and TMEP §1203.03 for information about the legislative history of §2(a).
To establish that a proposed mark falsely suggests a connection with a person or an institution, it must be shown that:
Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1377, 2021 USPQ2d 913, at *11 (Fed. Cir. 2021) (citing In re Jackson, 103 USPQ2d 1417, 1419 (TTAB 2012)); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *17-18 (TTAB 2021) (citing Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *4 (TTAB 2019)); see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *3 (TTAB 2020); In re Pedersen, 109 USPQ 2d 1185, 1188-89 (TTAB 2013); In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417, 1419 (TTAB 2012); In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507 (TTAB 2009); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 (TTAB 2008); Ass’n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838, 1842 (TTAB 2007); In re White, 80 USPQ2d 1654, 1658 (TTAB 2006); In re White, 73 USPQ2d 1713, 1718 (TTAB 2004); In re Nuclear Rsch. Corp., 16 USPQ2d 1316, 1317 (TTAB 1990); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); see also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1375-77, 217 USPQ 505, 508-10 (Fed. Cir. 1983) (providing foundational principles for the four-part test used to determine false connection).
First element. The term at issue need not be the actual, legal name of the party falsely associated with the applicant’s mark. See, e.g., NPG Recs., LLC v. JHO Intell. Prop. Holdings LLC, 2022 USPQ2d 770, at *6, *15 (TTAB 2022) (finding PURPLE RAIN, the name of a well-known song and album written and performed by Prince and the title of a motion picture scored by and starring Prince, to be "synonymous with Prince"); Hornby v. TJX Cos., 87 USPQ2d 1411, 1417, 1424 (TTAB 2008) (finding TWIGGY to be the nickname of professional model Lesley Hornby); Buffett v. Chi Chi’s, Inc., 226 USPQ at 429-30 (finding MARGARITAVILLE, the name of a well-known song written and performed by Jimmy Buffett, to be the public persona of singer Jimmy Buffett). "[A] nickname or an informal reference, even one created by the public, can qualify as an entity's ‘identity,’ thereby giving rise to a protectable interest." Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496 (TTAB 2015). A term may also be considered the identity of a person "even if the person has not used that term." In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4 (citing In re Nieves & Nieves LLC, 113 USPQ2d 1629, 1644 (TTAB 2015); In re Urbano, 51 USPQ2d 1776, 1779 (TTAB 1999)). In addition, the fact that a term identifies both a particular group of people and the language spoken by some of the members of the group is not evidence that it fails to identify the group. In re Pedersen, 109 USPQ 2d at 1190 (rejecting applicant’s argument that, because the term LAKOTA identifies a language, it does not approximate the name or identity of a people or institution).
Second element. The requirement that the proposed mark would be recognized as pointing uniquely and unmistakably to the person or institution does not mean that the term itself must be unique. In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d at 1419, 1420; Hornby, 87 USPQ2d at 1426. Rather, the question is whether, as used with the goods or services in question, consumers would view the mark as pointing uniquely to the person or institution, or whether they would perceive it to have a different meaning. E.g., Univ. of Notre Dame du Lac, 703 F.2d at 1377, 217 USPQ at 509 (finding NOTRE DAME did not point uniquely and unmistakably to the appellant, the University of Notre Dame in Indiana, because the name identifies a famous religious figure and is used in the names of churches dedicated to this figure such as the Cathedral of Notre Dame in Paris, France); Schiedmayer Celesta GmbH v. Piano Factory Grp., Inc., 2019 USPQ2d 341894, at *7 (TTAB 2019) (quoting In re White, 73 USPQ2d at 1720) (finding SCHIEDMAYER pointed uniquely and unmistakably to petitioner based on evidence that the name had been associated with a family prominent in the keyboard musical instrument industry for hundreds of years and had no other meaning), aff’d, 11 F.4th 1363, 2021 USPQ2d 913 (Fed. Cir. 2021); Hornby, , 87 USPQ2d at 1427 (finding TWIGGY pointed uniquely and unmistakably to petitioner, who was recognized as a famous British model, and that the dictionary meaning of "twiggy" as resembling or abounding in twigs would not be the consumers’ perception of the name for respondent’s children’s clothing).
In addition, unassociated third-party use of a term does not in and of itself establish that that the term does not point uniquely or unmistakably to a particular person or institution. See In re Pedersen, 109 USPQ2d at 1196 (finding consumer exposure to third-party use of LAKOTA on products and services unrelated to applicant’s insufficient to show that applicant’s use of LAKOTA did not point uniquely to the Lakota people); Hornby, 87 USPQ2d at 1427 (finding evidence of third-party registrations showing registration of the term "TWIGGY" for goods unrelated to children’s clothing had "no probative value"); cf. NPG Recs., LLC v. JHO Intell. Prop. Holdings, 2022 USPQ2d 770, at *19 (finding applicant’s evidence of three third-party registrations for items related to the goods in applicant’s application insufficient to show that PURPLE RAIN did not point uniquely to opposer).
Third element. A connection with an entity is established when the record establishes a specific endorsement, sponsorship, or the like of the particular goods and services, whether written or implied. In re White, 80 USPQ2d 1654, at 1660-61. In In re Sloppy Joe’s International Inc., 43 USPQ2d 1350, 1353-54 (TTAB 1997) , the Trademark Trial and Appeal Board held that Ernest Hemingway’s friendship with the original owner of applicant’s bar, his frequenting the bar, and his use of the back room as an office did not establish the kind of "connection" that entitled applicant to register a mark consisting in part of a portrait of Hemingway. Rather, a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant’s services would be necessary to entitle the applicant to registration. Id.
If it is unclear whether the person or institution is connected with the goods sold or services performed by the applicant, the examining attorney must make an explicit inquiry under 37 C.F.R. §2.61(b). If the examining attorney independently confirms that the person or institution is connected with the goods sold or services performed by the applicant, a Note to the File must be entered in the record to reflect that no further action is required as to the issue of false suggestion of a connection. See TMEP §710.02.
Fourth element. To establish the fame or reputation of the person or institution under this factor, one is not required to show the fame or reputation of the name "in the entire United States." Ass’n Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall Dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d at 1843, 1844 (finding the evidence sufficiently showed the fame and reputation of Russian artist Marc Chagall where his work had been featured in exhibits in several major U.S. cities in several regions as well as in permanent public displays, including large stained glass windows installed at the United Nations).
Further, the Court of Appeals for the Federal Circuit has stated
[A] party's name may be famous among the particular consumers of those goods and services even if it is not famous among members of the general public. And a party's name may be associated with particular goods such that a false association may be established with goods or services of that type even if it would not have been established with respect to entirely different goods or services.
Piano Factory Grp., Inc., 11 F.4th at 1380, 2021 USPQ2d 913, at *14-15 (citing In re Nieves & Nieves, LLC, 113 USPQ2d at 1633; In re Pedersen, 109 USPQ2d at 1202; U.S. Navy v. U.S. Mfg. Co., 2 USPQ2d 1254, 1260 (TTAB 1987); 7 Louis Altman & Mall Pollack, Callmann on Unfair Competition, Trademarks & Monopolies §26.21, at 26-103-04 (4th ed. 2021)).
Intent. Intent to identify a party or trade on its goodwill is not a required element of a §2(a) claim of false suggestion of an association with such party. S & L Acquisition Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987) ; Consol. Natural Gas Co. v. CNG Fuel Sys., Ltd., 228 USPQ 752, 754 (TTAB 1985) . However, evidence of such an intent could be highly persuasive that the public would make the intended false association. Piano Factory Grp. Inc., 11 F.4th at 1380-81, 2021 USPQ2d 913, at *15 (citing Univ. of Notre Dame du Lac, 703 F.2d at 1377, 217 USPQ at 509; In re Pedersen, 109 USPQ2d at 1202; In re Peter S. Herrick, P.A., 91 USPQ2d at 1509; Ass’n Pour la Defense et la Promotion de L'Oeuvre de Marc Chagall Dite Comite Marc Chagall, 82 USPQ2d at 1843).
Prior user. A refusal on this basis requires, by implication, that the person or institution with which a connection is falsely suggested must be the prior user. In re Nuclear Rsch. Corp., 16 USPQ2d at 1317 (citing In re Mohawk Air Servs., Inc., 196 USPQ 851, 854-55 (TTAB 1977)); see In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998) (citing In re Kayser-Roth Corp., 29 USPQ2d 1379, 1384-85 (TTAB 1993); Kardex Sys., Inc. v. Sistemco N.V., 221 USPQ2d 149, 151 (TTAB 1983)). However, it is not necessary that the prior user ever commercially exploit the name as a trademark or in a manner analogous to trademark use. In re Pedersen, 109 USPQ2d at 1193; see In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *4. A false suggestion of a connection may be found when the party’s right to control the use of its identity is violated, even if there is no juristic entity having the authority to authorize use of the mark. In re Pedersen, 109 USPQ2d at 1193.
Registration of matter that may falsely suggest a connection with a United States government agency or instrumentality is prohibited under §2(a). See TMEP §1203.03(b)(i) (setting out the four-element test). Some names, acronyms, titles, terms, and symbols of United States government agencies or instrumentalities are also protected by separate statute. See TMEP §1205.01 for information about statutorily protected matter and Appendix C for a nonexhaustive list of United States statutes protecting designations of certain government agencies and instrumentalities. Many of these statutes allow third parties to use the protected matter when authorized by an agency official. This authorization to use, by itself, should not be construed to extend to authorization to register marks that include matter the applicant does not own. See generally TMEP §1201 regarding the ownership requirement. Where it appears from the record that the applicant is not the agency or instrumentality referenced in the mark, but the record suggests an affiliation between the applicant and the referenced agency, the examining attorney must require the applicant to establish its authorization to register the mark by requesting information pursuant to 37 C.F.R. §2.61(b). See TMEP §1201.06(c).
Registration must be refused if the nature of the mark and the nature of the goods or services is such that a United States government agency or instrumentality would be presumed to be the source or sponsorship of the applicant’s goods or services. In re Peter S. Herrick, P.A., 91 USPQ2d 1505, 1507-08 (TTAB 2009) (finding "U.S. CUSTOMS SERVICE" is a close approximation of the former name of the government agency, United States Customs Service, which is now known as the United States Customs and Border Protection but which is still referred to as the U.S. Customs Service by the public and the agency itself, that the seal design in the proposed mark is nearly identical to the seal used by the former United Stated Customs Service, that the only meaning the "U.S. Customs Service" has is to identify the government agency, and that a connection between applicant’s attorney services and the activities performed by the United States Customs and Border Protection would be presumed); In re Nat'l Intelligence Acad., 190 USPQ 570, 572 (TTAB 1976) (stating NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggests a connection with the United States government since intelligence gathering is a known function of a number of government agencies and "[a] normal outgrowth and development of such activities would be the training of officers in intelligence gathering"); In re Teasdale Packing Co., 137 USPQ 482 (TTAB 1963) (holding U. S. AQUA and design unregistrable under §2(a) on the ground that purchasers of applicant’s canned drinking water would be misled into assuming approval or sponsorship by the United States government in view of the nature of the mark, including a red, white, and blue shield design, and the nature of the goods, the Board noting a program for stocking emergency supplies of water in fallout shelters and the setting of standards for drinking water by United States government agencies).
The record must include evidence showing that the designation in the mark references the agency or instrumentality and that the goods or services are such that a connection with that agency or instrumentality would be presumed, particularly when it is not readily apparent that the wording or acronym in the mark refers to the agency or instrumentality. Compare In re Mohawk Air Serv. Inc., 196 USPQ 851, 855 (TTAB 1977) (holding MOHAWK 298, for airplanes, to not falsely suggest a connection with the U.S. Army and the Army’s use of the term "Mohawk" to identify one of its airplanes, since there was no evidence of record that the Army continuously used the term since 1958, that the public was aware of such use, or that the public would associate "Mohawk" named airplanes with the U.S. Army), with In re U.S. Bicentennial Soc’y, 197 USPQ 905, 906-07 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, to falsely suggest a connection with the American Revolution Bicentennial Commission and the United States government, based on applicant’s claims in the specimen of record and the fact that "swords have historically been presented by grateful sovereigns and governments to persons who have been honored by such gifts and that ceremonial swords are on display in the museum at Mt. Vernon").
Furthermore, the question of the registrability of a mark under §2(a) "is determined in each case by the nature of the goods or services in connection with which the mark is used and the impact of such use on the purchasers of goods or services of this type." NASA v. Record Chemical Co. Inc., 185 USPQ 563, 568 (TTAB 1975) . Thus, the identified goods or services must be scrutinized in the context of the current marketplace to determine whether they are of the type to be offered by United States government agencies and instrumentalities. For instance, if the evidence supports a finding that it is commonplace for government agencies to sell or license the sale of consumer merchandise featuring agency names or acronyms, such as clothing, toys, key chains, and calendars, a false connection with a government agency would be presumed if that agency name or acronym is used in connection with those goods and, therefore, the mark should be refused registration under §2(a).
The §2(a) false suggestion of a connection refusal and the procedures stated above also apply to marks containing names of, and acronyms and terms for, United States government programs (e.g., Medicare or FAFSA), military projects (e.g., BigDog), and quasi-government organizations (e.g., Smithsonian Institution). The examining attorney may also require the applicant to provide additional information about the mark and/or the goods or services, under Trademark Rule 2.61(b). 37 C.F.R. §2.61(b).
Disclaiming the name of, or acronym for, the United States government agency or instrumentality to which the mark refers generally will not overcome the §2(a) refusal. See TMEP §1213.03(a) regarding unregistrable components of marks. If the test for false suggestion of a connection under §2(a) is not met, the examining attorney must still determine whether the applicant is authorized to register the designation in the mark. If, based on the record, the applicant lacks authorization from the government agency or instrumentality to register the mark, the examining attorney must refuse under §§1 and 45 of the Trademark Act. See TMEP §1201.06(c).
Some designations have been held to falsely suggest a connection to a person or an institution within the meaning of §2(a). E.g., Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, ___ F.4th ___, 2021 USPQ2d 913, at 15-16 (Fed. Cir. 2021) (holding SCHIEDMAYER for pianos falsely suggests a conection with the well-known Schiedmayer Celesta GmbH business that has manufactured and sold quality keyboard musical instruments for nearly 300 years); In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218 (Fed. Cir. 2009) (holding SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, both for cigarettes, falsely suggest a connection with the Shinnecock Indian Nation); In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786 (TTAB 2020) (holding TRUMP-IT MY PACKAGE OPENER MAKE OPENING PACKAGES GREAT and design and TRUMP-IT MY PACKAGE OPENER and design, both for utility knives, falsely suggest a connection with Donald Trump); In re Jackson Int’l Trading Co. Kurt D. Bruhl GmbH & Co. KG, 103 USPQ2d 1417 (TTAB 2012) (holding BENNY GOODMAN COLLECTION THE FINEST QUALITY (stylized) for fragrance and cosmetics falsely suggests a connection with the deceased musician Benny Goodman; the record showed that Benny Goodman’s estate had a business representative that granted people the use of his name and/or persona); In re Peter S. Herrick, P.A., 91 USPQ2d 1505 (TTAB 2009) (holding U.S. CUSTOMS SERVICE and seal design for attorney services falsely suggests a connection with the government agency formerly known as the U.S. Customs Service and now known as the U.S. Customs and Border Protection); Hornby v. TJX Cos., 87 USPQ2d 1411 (TTAB 2008) (holding TWIGGY for children’s clothing falsely suggests a connection with the internationally known British model and actress who was a major celebrity in the late 1960s, finding that she retained a sufficient degree of fame or reputation that a connection would still be presumed by consumers seeing the mark TWIGGY on children’s clothing as of the date on which respondent’s registration issued in 2000); Ass'n Pour La Def. et la Promotion de L'Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82 USPQ2d 1838 (TTAB 2007) (holdinig MARC CHAGALL for vodka falsely suggests a connection with the painter Marc Chagall); In re White, 80 USPQ2d 1654 (TTAB 2006) (holding MOHAWK for cigarettes falsely suggests a connection with the federally recognized tribe the St. Regis Band of Mohawk Indians of New York); In re White, 73 USPQ2d 1713 (TTAB 2004) (holding APACHE for cigarettes falsely suggests a connection with the nine federally recognized Apache tribes); In re Urbano, 51 USPQ2d 1776 (TTAB 1999) (holding SYDNEY 2000, used for advertising and business services and communication services, falsely suggests a connection with Olympic Games, since the general public would recognize phrase as referring unambiguously to Olympic Games to be held in Sydney, Australia in 2000; entire organization that comprises Olympic games qualifies as "institution."); In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282 (TTAB 1997) (holding NAFTA, used on "promotion of trade and investment" services, falsely suggests a connection with the North American Free Trade Agreement; NAFTA qualifies as institution because it encompasses treaty, supplemental agreements, and various commissions, committees and offices created by those documents); In re Sloppy Joe’s Int’l Inc., 43 USPQ2d 1350 (TTAB 1997) (holding SLOPPY JOE’S, with design that includes portrait of Ernest Hemingway falsely suggests a connection with deceased writer); In re Sauer, 27 USPQ2d 1073 (TTAB 1993) holding BO BALL for oblong shaped leather ball with white stitching falsely suggests a connection with athlete Bo Jackson, aff’d per curiam, 26 F.3d 140 (Fed. Cir. 1994); Bd. of Tr. of Univ. of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986) (granting petition to cancel registration of BAMA, for shoes, slippers, stockings because BAMA pointed uniquely to the University of Alabama and thus falsely suggests a connection with the University); In re Cotter & Co., 228 USPQ 202 (TTAB 1985) (holding WESTPOINT, for shotguns and rifles, falsely suggests a connection with an institution, the U.S. Military Academy); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985) (denying applicant’s motion for summary judgment since evidence of record supported an association of MARGARITAVILLE with the public persona of opposer Jimmy Buffett); In re U.S. Bicentennial Soc'y, 197 USPQ 905 (TTAB 1978) (holding U.S. BICENTENNIAL SOCIETY, for ceremonial swords, falsely suggests a connection with the American Revolution Bicentennial Commission and the U.S. government); In re Nat'l Intelligence Acad., 190 USPQ 570 (TTAB 1976) (holding NATIONAL INTELLIGENCE ACADEMY, for educational and instructional services in intelligence gathering for law enforcement officers, falsely suggests a connection with the U.S. government); In re Nat’l Collection & Credit Control, 152 USPQ 200 (TTAB 1966) (holding the word "national" along with an outline representation of the United States or a representation of an eagle, for collection and credit services, falsely suggests a connection with the U.S. government).
Other designations have been held not to falsely suggest a connection to a person or institution within the meaning of §2(a). E.g., Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377, 217 USPQ 505, 509 (Fed. Cir. 1983) (holding NOTRE DAME and design, for cheese, not to falsely suggest a connection with the University of Notre Dame. "As the Board noted, ‘Notre Dame’ is not a name solely associated with the University. It serves to identify a famous and sacred religious figure and is used in the names of churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris, France. Thus it cannot be said that the only ‘person’ which the name possibly identifies is the University and that the mere use of NOTRE DAME by another appropriates its identity."), aff’g 213 USPQ 594 (TTAB 1982); U.S. Olympic Comm. v. Tempting Brands Neth. B.V., 2021 USPQ2d 164, at *2-3, 22, 32-33 (TTAB 2021) (holding PIERRE DE COUBERTIN for a variety of personal goods, including toiletries, jewelry, and clothing, not to falsely suggest a connection with opposer the U.S. Olympic Committee because, although Coubertin is widely recognized for launching the Olympic movement in the late 19th century, evidence did not show his name pointing uniquely to the USOC or the Olympic movement); Pierce-Arrow Soc’y v. Spintek Filtration, Inc., 2019 USPQ2d 471774, at *6-8 (TTAB 2019) (holding PIERCE-ARROW for automobilies not to falsely suggest a connection with the Pierce-Arrow Society because the evidence did not show the society was a legal successor of the Pierce-Arrow Motor Car Company, the sociey’s preservation efforts of the car made by and protection of the marks of that company did not uniquely point to the society, and the former company and its abandoned trademarks were not famous or had any reputation that transferred to the society); Bos. Athletic Ass'n v. Velocity, LLC, 117 USPQ2d 1492, 1496-99 (TTAB 2016) (oholding MARATHON MONDAY for clothing not to falsely suggest a connection with opposer because the evidence did not establish that MARATHON MONDAY is perceived by the relevant public as a close approximation of the name or identity of opposer, and frequent and various third-party uses of MARATHON MONDAY indicated that the term does not point uniquely and unmistakably to opposer); In re MC MC S.r.l.,88 USPQ2d 1378, 1381 (TTAB 2008) holding MARIA CALLAS for jewelry and other goods not to falsely suggest a connection with Maria Callas, the famous deceased opera singer, her heirs or her estate because the record contained contradictory evidence as to the existence of anyone currently possessing rights in the name "Maria Callas," and resolving doubt in favor of applicant "removes the possibility that we might be denying registration to an applicant based on non-existent rights," and because a person or entity claiming rights in a name or persona has recourse since §2(a) is not time barred); In re L.A. Police Revolver & Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) (holding slogan TO PROTECT AND TO SERVE, used by applicant Los Angeles Police Revolver and Athletic Club, Inc., not to falsely suggest a connection with the Los Angeles Police Department, where evidence showed an actual longstanding commercial connection, publicly acknowledged and endorsed by both parties); Internet Inc. v. Corp. for Nat’l Resch. Initiatives, 38 USPQ2d 1435 (TTAB1996) (holding cancellation petitioners failed to state claim for relief where they had not alleged, and could not reasonably allege, that the term INTERNET points uniquely and unmistakably to their own identity or persona); Ritz Hotel Ltd. v. Ritz Closet Seat Corp., 17 USPQ2d 1466, 1471 (TTAB 1990) (holding RIT-Z in stylized form for toilet seats not to falsely suggest a connection with opposer, where there was no evidence showing a connection between applicant’s mark and opposer corporation, The Ritz Hotel Limited); In re Nuclear Rsch. Corp., 16 USPQ2d 1316 (TTAB 1990) (holding NRC and design, for radiation and chemical agent monitors, electronic testers, and nuclear gauges, not to falsely suggest a connection with the U.S. Nuclear Regulatory Commission in view of applicant’s use of NRC long prior to the inception of that agency); NASA v. Bully Hill Vineyards, Inc., 3 USPQ2d 1671, 1676 (TTAB 1987) (dismissing opposition to the registration of SPACE SHUTTLE for wines and holding "shuttle" to be a generic term for a space vehicle or system; "[w]here a name claimed to be appropriated does not point uniquely and unmistakably to that party’s personality or ‘persona,’ there can be no false suggestion" of connection); In re Mohawk Air Serv. Inc., 196 USPQ 851 (TTAB 1977) (holding MOHAWK 298 not to falsely suggest a connection with the U.S. Army and the Army’s use of the term "Mohawk" to identify one of its airplanes, since there was no evidence that the Army continuously used that term since 1958, the public was aware of such use, or the public would associate "Mohawk" named airplanes with the Army); NASA v. Record Chem. Co., 185 USPQ 563 (TTAB 1975) (dismissing opposition to registrations of APOLLO 8 for moth preventatives and mothproofing agent-air freshener because, while NASA is a juristic person and prior user of the terms APOLLO and APOLLO 8 for its space missions, it is unlikely that the average purchaser of applicant’s goods would assume NASA to be source or sponsorship of the goods or mistakenly believe that the goods were of NASA space exploration technology); FBI v. Societe: "M.Bril & Co.", 172 USPQ 310 (TTAB 1971) (dismissing opposition to registration of FBI FABRICATION BRIL INTERNATIONAL for clothing since it was unreasonable that the public would assume applicant’s goods originated with, were sponsored or endorsed by, or associated with the Federal Bureau of Investigation, finding that "FBI" represents "Fabrication Bril International" and purchasers would see the entire composite mark on the goods and not just "FBI," and noting that both the U.S. government and the Federal Bureau of Investigation are juristic persons); In re Horwitt, 125 USPQ 145, 146 (TTAB 1960) (holding U. S. HEALTH CLUB registrable for vitamin tablets. "Considering both the nature of the mark and the goods, it is concluded that the purchasing public would not be likely to mistakenly assume that the United States Government is operating a health club, that it is distributing vitamins, or that it has approved applicant’s goods."); Lucien Piccard Watch Corp. v. Since 1868 Crescent Corp., 314 F. Supp. 329, 165 USPQ 459 (S.D.N.Y. 1970) (holding DA VINCI not to falsely suggest a connection with deceased artist Leonardo Da Vinci).
