Ttab Decisions and Developments

• Jurisdiction: United States,Federal
• Citation: Vol. 46 No. 1
• Publication year: 2021
• Author: Jane Shay Wald
• topic: Advertising Law,Trademark,Intellectual Property

TTAB Decisions and Developments

Jane Shay Wald

Irell & Manella LLP

"Failure To Function" Let's Meet At The Junction Exploring What Happened And Why When So Many Cases Lack Trademark-Ish Bases To Designate Source, Though They Try

The Board has with increasing frequency had occasion to consider whether marks fail to function as trademarks because they are terms (or images) in common usage, incapable of being source-indicators. A number of these cases have been designated non-precedential, but five have been designated precedential since October 2020. All are covered in this quarter's column. Because failure to function refusals are growing more prevalent, this quarter's column is dedicated to the TTAB's most recent precedential and non-precedential "failure to function" cases.

The Board upheld the refusal to register PAST PRESENT FUTURE on the Principal Register for t-shirts, affirming the Examining Attorney's decision that the proposed mark fails to function as a trademark. The Board agreed the proposed mark merely is a slogan or term that would not be perceived as identifying and distinguishing the Applicant's goods and indicating their source. "Instead, it would be perceived as a commonplace term, message, or expression widely used by a variety of sources."

The Board cited e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016), sustaining an opposition to registration of I HEART DC for clothing because "'it has been widely used, over a long period of time and by a large number of merchandisers as an expression of enthusiasm, affection or affiliation with respect to the city of Washington DC and would not be perceived as a source-indicator.'"

A Common Phrase Used Nights And Days Can't Be A Brand For Shirts "Past Present Future" Was Refused Fair's Fair (Although It Hurts)

The Board explained that the question presented of whether PAST PRESENT FUTURE is more than a commonplace message and functions as a mark depends on the relevant public, namely buyers or potential buyers for Applicant's t-shirts, and how the relevant public would perceive the term as a source-identifier. "'The more commonly used the phrase, the less likely that the public will use it to identify only one seller and the less likely that it can achieve trademark status.'" The Examining Attorney contended that the proposed mark "is commonly used to refer to or describe or recount the general history/background, the current state and the direction/projection of a person, animal, idea, or concept in a lineal fashion based on a timeline." The Examining Attorney provided substantial evidence of third-party websites showing use of the term PAST PRESENT FUTURE in myriad settings. Some of these were third-party t-shirts with PAST PRESENT FUTURE arrayed over the chest, in the manner of the Applicant's specimen.

Applicant's arguments for registration were addressed and rejected in turn. Applicant urged that PAST PRESENT FUTURE "is known in the boxing industry to indicate the career of the champion boxer Floyd Mayweather, Jr. and the sports and entertainment related goods and services provided by his company Mayweather Promotions, LLC," the Applicant. Applicant further contends that consumers recognize the mark as affiliated with Applicant because the relevant public comprises sports fans, who have seen the slogan for more than ten years "in association with Floyd Mayweather and [Applicant]." The Applicant further urges that it has dedicated significant resources to promoting goods and services under the name, such that it has become distinctive.

The Board agreed with the Examining Attorney that Applicant could not rely on the relevant public for the goods as comprising only sports fans because there was no language in the application limiting the claim of goods to t-shirts for sports fans. Therefore, the claimed goods pertained to anyone buying a t-shirt, not just sports fans. The Board found Applicant's additional arguments lacked evidentiary support. "There is simply no evidence in the record regarding Floyd Mayweather, Jr., his career, or even his purported legal connection to Applicant. Nor is there evidence of what 'fans' have seen 'for more than 10 years in association with Mayweather' or Applicant nor was evidence presented to show secondary meaning.

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Applicant argued that the evidence submitted by the Examiner doesn't show that the phrase PAST PRESENT FUTURE conveys any information about the goods. "Just because there is some evidence on the internet showing use of a mark in a decorative fashion does not automatically lead to the conclusion that the relevant consuming public, i.e., sports and boxing fans, will not associate Appellant's goods sold under the mark with Applicant."

"Applicant's argument that the evidence does not show PAST PRESENT FUTURE merely conveys information about the goods is inapposite, since the Examining Attorney does not make that argument a basis for refusal." (Emphasis in original). A term may still fail to function as a mark even if it does not convey information about the goods themselves.

Applicant submitted a dozen third-party registrations for different marks for what it called "sports-related slogans" that the USPTO has registered. But the Board agreed with the Examining attorney that this was misguided. The refusal to register was not on the basis that PAST PRESENT FUTURE was "sports-related." Showing that the USPTO sometimes registers various sports-related slogans was irrelevant.

Applicant argued that PAST PRESENT FUTURE created a "secondary source" identification. The Board disagreed. Where a mark is rejected as "merely ornamental," an Applicant can bring in evidence that, while the Applicant's proposed mark is used in a decorative or ornamental way on the goods, it also has a source-indicating function, based on Applicant's past use of the mark in a non-ornamental manner. But the PAST PRESENT FUTURE mark was not refused on the grounds that it is merely ornamental. It was refused for being a widely used common expression of a familiar concept, and not as a source-indicator for trademarks. In re Mayweather Promotions, LLC, Ser. No. 86753084 (TTAB October 29, 2020) (Precedential).

Whose Team They're On? The Phrase Aglow "Team Jesus" Was That Team And So The Phrase Was Praise For Christian Ways And Not A Brand You'd Know

The Board again upheld a "failure to function" refusal of a proposed mark, TEAM JESUS, sought to be registered for various items of clothing, and for educational and entertainment services pertaining to religious awakening and devotion. The Board found TEAM JESUS was widely used to convey ordinary or familiar concepts or sentiments. It fails to function as a source indicator because it is "'an informational social, political, religious, or similar kind of message' that 'conveys being a Christian.'"

The assessment whether TEAM JESUS functions as a mark is based on whether the relevant public, namely, purchasers or potential purchasers of the identified clothing and services related to religious awakening and devotion, would perceive the mark as identifying the source or origin of these goods and services. Here, the Board relied on, among others, its contemporaneously decided case, In re Texas With Love, LLC, 2020 USPQ2d 11290 at *7 (TTAB 2020), summarized here, to conclude that there was no source indication.

The Board also relied on its contemporaneously decided case, In re Mayweather Promotions, LLC, Ser. No. 86753084 (October 29, 2020), summarized here, for the point that matter that is "widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source" and, not being trademarks, they cannot be registered.

The Examining Attorney submitted substantial evidence reflecting general use of the phrase TEAM JESUS "to convey a sentiment of affiliation with Jesus Christ and the Christian religion."

In this case, unlike the specimen in In re Mayweather, where the mark was emblazoned across the chest area of the t-shirt, the TEAM JESUS Class 25 clothing specimen shows the mark on the shirt's outer-neck. That neck placement is potentially non-ornamental, and "conventional for the display of trademarks." But the Board explained that placement does not require a different result than the failure to function refusal. Because of the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources, 'it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label.'" D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016).

The Board likened the case to those where other messages of affinity were unregistrable. For example, it cited In re Eagle Crest, Inc. 96 USPQ2d 1227, 1229 (TTAB 2010), where the Board held that ONCE A MARINE, ALWAYS A MARINE for clothing did not function as a mark because of evidence showing it was a common motto in support of the U.S. Marines, "to convey information, that is, to express support, admiration or affiliation with the marines."

Applicant's own specimen for its Class 41 services was an admission against registrability, reinforcing "the nature of TEAM JESUS as a message of affiliation by referring to Christians generally as part of 'Team Jesus.'" In re Team Jesus LLC, Ser. No. 88105154 (TTAB Dec. 10, 2020) (Precedential).

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