Ttab Decisions and Developments

Publication year2024
CitationVol. 49 No. 1
AuthorJane Shay Wald
TTAB DECISIONS AND DEVELOPMENTS

Jane Shay Wald
Irell & Manella LLP

"FOLLOW THE LEADER" For Credit Card Stuff?
The Board Found The EA Did Not Prove Enough

Here, "Failure To Function" Was Held Unsupported
By Evidence, So The Refusal? Aborted.

Judge Hudis Was Wise; Well-Respected, Admired
This Was His Last Case; He's Departed

We Honor His Memory, How He Inspired
So Many, With Wisdom Imparted

This is a sad Opinion although it is well-reasoned, it provides an important overview of the "failure to function" doctrine, and it stands as an important precedent. It is sad because it is the last precedential Opinion of Administrative Law Judge Jonathan Hudis, who passed away in January 2024, after many years of service on the Trademark Trial and Appeal Board. Judge Hudis was a remarkable asset to the TTAB and to the advancement of trademark law—and of our community of trademark lawyers—throughout his distinguished career. We memorialize him earlier in this issue. We will miss him greatly, but his substantial impact on the trademark practice lives on.

In a rare reversal of a failure-to-function refusal, the Board found the Examining Attorney offered insufficient evidence to show that the phrase in question, FOLLOW THE LEADER, was incapable of functioning as a source identifier in the context of the services identified in the application. The identified services were a credit card incentive program, credit card financial services, travel information, ticket reservation, travel advisory, salon and spa reservation, concierge services, and many other services offered through a premium credit card agreement.

The Board explained the statutory and case law background of the "failure to function" refusal. Sections 1, 2, 3, and 45 of the Trademark Act provide the statutory basis for refusal to register subject matter that does not function as a trademark or services mark. Specifically: Sections 1 and 2 provide for an application and registration on the Principal Register of trademarks by which the goods of the applicant may be distinguished from the goods of others. Section 3 extends the trademark principles of Secs. 1 and 2 to service marks. Sec. 45 defines a "service mark" as "any word, name, symbol, or device, or any combination thereof...used by a person or...which a

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person has a bona fide intention to use in commerce and applies to register on the Principal Register to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown."

The first question therefore is whether the proposed mark satisfies these definitional requirements. "'[T]he lead criterion for registration is that the mark in fact serve as a 'trademark' to identify and distinguish goods [or services]. Jack Daniel's Props., Inc. v VIP Prods. LLC, 143 S. Ct. 1578, 2023 USPQ2d 677, at *5 (2023) (cleaned up) (also explaining that 'a trademark is not a product unless it identifies a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand).'" The Board also cited In re Brunetti, 2022 USPQ2d 764, at *9 (TTAB 2022), "(The USPTO 'is statutorily constrained to register matter on the Principal Register if and only if it functions as a mark.") This was the case Erik Brunetti brought after winning Iancu v. Brunetti 588 U.S. ___ (2019) in the U.S. Supreme Court. There, the "scandalous and immoral" part of Section 2(a) of the Act by which the USPTO refused to register Brunetti's mark FUCT for apparel was struck down on First Amendment grounds. After his victory, Brunetti then applied to register five marks consisting of the word FUCK. The Examining Attorney refused registration for failure to function—having nothing to do with Sec. 2(a)—and the Board upheld that refusal to register. [Appeal to Fed. Cir. withdrawn by agreement].

The Board here went on to explain that "not every designation adopted with the intention that it perform a service mark function necessarily accomplishes that purpose," citing In re Tex. With Love, LLC, 2020 USPQ2d 112390, at *2-3. The critical element to determine whether a term or phrase is a trademark or service mark is the impression it has on the relevant public. If the evidence shows that the proposed mark would not be perceived by consumers as a source identifier for the claimed goods or services, it is not subject to registration. The evidence may show that "the mark is a common term that consumers of the services identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments," citing In re Brunetti, where the TTAB found the term FUCK to be ubiquitous for all manner of goods, services and sentiments and therefore failed to function as a source identifier.

Where the Board found the Examining Attorney went wrong here is that "not every common term or phrase warrants refusal on failure to function grounds. The refusal is strictly dependent on the evidence presented to show how consumers would perceive the proposed mark. The totality of the evidence must be sufficient to show that the phrase sought to be registered is used in such a way that it cannot be attributed to a single source of the goods or services at issue." Cf. In re Lizzo LLC, 2023 USPQ2d 139, at *39 (TTAB 2023) ('The totality of the evidence of record...undercuts a finding that 100% THAT BITCH is a commonplace expression, so widely used by third parties that consumers would not perceive it as indicating the source of the goods identified thereby.')."

The Board underscored that evidence of the public's perception may be obtained from "any competent source," including consumer surveys, dictionaries, newspapers, and other publications. (Nowadays, of course, Google and social media would be in play as such sources.) The Examining Attorney provided evidence, namely articles...

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