CAFC Sends Back TTAB's "GET ORDAINED" Decision: Board Ignored Its Own Policy Regarding Waiver of Unargued Claims

Well, this is a strange one. The CAFC reversed the Board's decision sustaining an opposition to registration of GET ORDAINED for retail store services and ecclesiastical services, remanding the case for further consideration. The Board found the phrase so commonly used that consumers will not perceive it as a source indicator pointing uniquely to the applicant. Alternatively, the Board found the phrase to be merely descriptive and lacking secondary meaning. [TTABlogged here]. However, Opposer AMM had made no argument regarding applicant's retail store services, and so the court sent the case back to the TTAB to consider why the Board did not apply its usual waiver-of-argument policy with respect to those services. Universal Life Church Monastery Storehouse v. American Marriage Ministries, Appeal No. 2022-1744 (Fed. Cir. November 22, 2023).

The CAFC was unable to square the Board's decision with the usual waiver practice. Despite the failure of AMM to refer to its Class 35-specific claims in its briefs, the Board went ahead and adjudicated those claims without explaining why it did not consider them waived.

In sum, we determine that (1) the Board has an established practice of considering unargued claims to be waived, (2) AMM did not refer to or argue any Class 35- specific claims in its trial briefs, and (3) the Board considered the Class 35-specific services but did not explain why it did not consider these claims to be waived in view of its established waiver practice. We accordingly hold that the Board acted arbitrarily and capriciously by departing from its established practice without providing a reasoned explanation for the departure.5 For that reason, we vacate the Board’s decision as to ULC Monastery’s Class 35-specific services.

The CAFC did not decide whether the Board may have a basis "for deeming AMM’s opposition to ULC Monastery’s Class 35 application not to be waived, or for excusing any waiver." If the Board on remand decides to "reconsider" ULC Monastery’s retail store services, the Board should ensure that its analysis has a basis in the record. 

The Board’s decision laid out a summary of the relied-on evidence of record. Opposition Decision, 2022 WL 500926, at *4–7. While this evidence relates to ULC Monastery’s ecclesiastical services, the Board did not explain its pertinence to ULC Monastery’s online retail store services. Moreover, the Board’s findings specific to online retail store services lack any citations to the record. Id. at *7, 11, 13. On remand, for its mere descriptiveness and failure-to-function analyses with respect to ULC Monastery’s online retail store services, the Board should “assure that the requisite findings are made, based on evidence of record” and “explain the reasoning by which the findings are deemed to support” the Board’s decision. 

Read comments and post your comment here.

TTABlogger comment: It appears that the parties will agree to dismiss the claims regarding the retail store services. BTW, the CAFC says "forfeiture" would be a more appropriate term than "waiver," since the latter is "the intentional relinquishment or abandment of a known right."

Text Copyright John L. Welch 2023.

Precedential No. 34: TTAB Dismisses Monster Energy's Section 2(d) Claim On Summary Judgment Due to DIssimilarity of Design Marks

Deeming the first DuPont factor to be dispositive, the Board granted Applicant Critical Role, LLC's motion for summary judgment, dismissing Opposer's Monster Energy's Section 2(d) claim. Monster alleged a likelihood of confusion between its registered "Claw" design mark for various goods and services, and applicant's "Circled MV" design mark for goods and services in eight classes. Monster's unchallenged dilution claim remains pending, since dilution may exist "regardless of the presence or absence of actual or likely confusion.” 15 U.S.C. Section 1043(c)(1). Monster Energy Company v. Critical Role, LLC, 2023 USPQ2d 1382 (TTAB 2023) [precedential].

The Board characterized Monster's mark as "three downward jagged and crooked lines of approximately equal size that resemble claw scratches and are connected at right angles." Critical Role's mark (which it described as the "stylized letters ‘V’ and ‘M’ oriented vertically within a circle") "consists of smooth lines, with two lines curving down to follow the shape of a background circle, two shorter lines which are diagonal and meet in the middle of the design, and two additional, diagonal lines which appear above the other lines and extend from the background circle to meet in the middle of the design."

Unlike Applicant’s mark, there is nothing circular in Opposer’s Claw Mark, and Applicant’s mark does not resemble claw scratches. When the marks are perceived in their entireties, these clear visual distinctions between the marks create very different commercial impressions. * * * The letter M as presented in the marks is stylized with such different shapes and types of lines that the marks as a whole do not resemble one another. With marks this different, confusion is unlikely.

And so, the Board granted the motion for summary judgment as to Monster's Section 2(d) claim.

Critical Role did not move for summary judgment as to Monster's Section 43(c) dilution-by-blurring claim but it maintained that the ruling on the Section 2(d) claim rendered the dilution claim moot. Not so, said the Board, pointing to Section 43(c)(1), which states that a claim for dilution is available "regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

The Board therefore resumed the proceeding with respect to the dilution claim.

Read comments and post your comment here.

TTABlogger comment: Since the marks are not similar for Section 2(d) purposes, how can they be similar for Section 43(c) purposes? The standard is the same. See Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011). It seems that summary judgment on the dilution claim is in the offing.

Text Copyright John L. Welch 2023.

Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services

The Board rendered a rare reversal of a failure-to-function refusal, finding the USPTO's evidence insufficient to establish that the phrase FOLLOW THE LEADER is incapable of serving as a source indicator for credit card incentive program, credit card financial, travel information, ticket reservation, travel advisory, salon and spa reservation, and concierge services. Although FOLLOW THE LEADER is in common use in various contexts, the phrase may convey different meanings in those contexts, and it does not have a commonly understood meaning applicable to the applicant’s services. In re Black Card LLC, 2023 USPQ2d 1376 (TTAB 2023) [precedential] (Opinion by Judge Jonathan Hudis).

Sections 1, 2, 3, and 45 of the Lanham Act provide the statutory basis for a refusal to register subject matter that does not function as a trademark or service mark. A threshold question in evaluating the registrability of a trademark or service mark is whether the proposed mark meets the source indication requirement. As the Supreme Court has recognized, “the 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).

Of course, "[t]he critical inquiry in determining whether a proposed mark functions as a … [service mark] is how the relevant public perceives the term sought to be registered.” Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (TTAB 2021). The evidence may show that the proposed mark “is a common term or phrase 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.” In re Brunetti, 2022 USPQ2d 764, at *12. “The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a … [service mark].” Id. (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)).

On the other hand, 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. 

To determine whether a phrase sought to be registered functions as a source indicator, the Board looks to evidence showing how the phrase is used in the marketplace by the applicant and by others.

The Examining Attorney argued that FOLLOW THE LEADER is "commonly used to encourage customers to follow the leader in a particular field and conveys that the applicant is the leader in the services listed in the application and should be followed because of this alleged fact .…" The evidence comprised a dictionary entry, articles, blogs, company websites, consumers goods, and other materials showing use of the phrase in connection with children's games, business decision- making, guided travel tours, governmental and political leadership, personal decision-making, and artwork on consumer items.

Applicant Black Card maintained the proposed mark provides no generalized informational message, and it asserted that there is no blanket rule that commonly used phrases are not registrable.

The Board observed that "[t]he record need not necessarily include evidence of third-party use in connection with the specific services at issue for the evidence to support the failure to function refusal." However, the evidence must demonstrate that the proposed mark "would convey a generally understood sentiment or meaning to the consumers of [Black Card's] services such that they would not perceive it as signifying the source of the services."

The Board found that the phrase FOLLOW THE LEADER may convey different meanings depending on context. "For example, FOLLOW THE LEADER can refer to business decisions made to align with the industry leader, a manager’s impact on employees or the business, politicians’ or government workers’ often negatively portrayed allegiance or compliance with a political figure or political leadership, tour groups being led by a tour guide, or personal decision-making, whether based on following a role model or following the crowd."

Thus, the phrase as issue here is unlike the phrase INVESTING IN AMERICAN JOBS in In re Wal-Mart Stores, 129 USPQ2d at 1153-56, where the evidence of Wal-Mart's own use and of common use of across different industries and manufacturing contexts "informed consumer perception of the phrase for the applicant’s retail store services and promotional services for goods made or assembled by American workers."

Concluding that the Office's evidence fell short, the Board reversed the refusal to register:

The evidence as a whole does not demonstrate use for services or in contexts from which we may reasonably infer that FOLLOW THE LEADER has a commonly understood meaning applicable to Applicant’s services that would render it incapable of being perceived as a source indicator for those services.

Read comments and post your comment here.

TTABlogger comment: What if the involved goods were t-shirts?

Text Copyright John L. Welch 2023.

CAFC Affirms TTAB's Dismissal of RANGER TREK Opposition: Not Confusable With TREK for Non-Bicycle Goods

The CAFC upheld the Board's dismissal [TTABlogged here] of Trek Bicycle's Section 2(d) opposition to registration of the mark RANGER TREK , in standard character and design form, for bags and clothing. The Board found confusion unlikely with the allegedly famous common law and registered mark TREK for bags and bicycling apparel. The appellate court determined that substantial evidence supported the Board's factual findings and the Board did not err in concluding that "the difference between the [parties'] marks [were] sufficient to avoid likely confusion." Trek Bicycle Corporation v. Christina Isaacs, 2023 USPQ2d 1356 (Fed. Cir. 2023) [not precedential].

Trek challenged the Board's factual findings as to the dissimilarity of the marks, the lack of fame and the strength of the TREK mark, and the Board's consideration of the prosecution history of one of Trek's trademark applications. Trek also challenged the Board's weighing of the DuPont factors.

As to the first DuPont factor, Trek contended, inter alia, that TREK is the dominant portion of applicant's marks, but the court concluded that the Board "reasonably found that 'RANGER' was more dominant" because RANGER is the first word in the mark and "reasonably concluded that the parties' marks differed in their overall commercial impression because 'TREK by itself simply references a journey or hike' whereas 'RANGER TREK evokes . . . a specific type of person with a mission on a RANGER TREK.'"

As to the fame of the TREK mark, the Board properly discounted Trek's raw sales and advertising numbers as insufficient. Trek argued that it had provided contextual evidence as well, but the court pointed out that Trek did not make that argument before the Board. In any case, as the Board pointed out, Trek's evidence was "not broken down by product and [did] not appear to be for only clothing and bags."

As to conceptual strength, the Board "reasonably relied on" certain dictionary definitions and third-party registrations to show that TREK is somewhat conceptually weak and suggestive of the involved goods. In any case, any error by the Board on this issue was harmless because "it appears that the Board concluded there was no likelihood of confusion without accounting for this finding."

With regard the Board's consideration of the prosecution history of the TREK mark, wherein Trek argued that its mark was not confusable with five other marks containing the word TREK, the Board found that the RANGER TREK mark could co-exist with TREK as well. The CAFC found no error in the Board's interpretation of the prosecution history. Again, if there were an error, it was harmless because the Board stated that it would not change the result.

Finally, as to the weighing of the DuPont factors, the court disagreed with Trek's contention that the Board gave too much weight to the dissimilarity of the marks, "especially given the Board's findings that the marks noticeably differed in appearance, sound, connotation, and commercial impression."

And so, the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlogger comment: It took nearly seven years from the commencement of the oppostion to this CAFC affirmance. Quite a trek!

Text Copyright John L. Welch 2023.

Recommended Reading: "Welcome To The Land Of Trademark Cancellation -- Where Not All Fraud Is Created Equal"

Janelle Barbier, Editor-in-Chief of the Santa Clara High Tech Law Journal, has written an interesting and informative article on the CAFC's recent ruling in Great Concepts, LLC v. Chutter, Inc. [TTABlogged here], in which a divided court panel reversed the TTAB's finding of fraud because "a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability declaration." A .pdf of the article is available here.

ABSTRACT

The intellectual property community is buzzing about a recent decision by the U.S. Court of Appeals for the Federal Circuit handing down a ruling on trademark cancellation under the Lanham Act. A divided panel grappled with whether the Agency had authority to cancel a trademark registration as a punishment for filing a false declaration. The majority held that the Agency was precluded from canceling the registration as a remedy for fraud unrelated to the issuance or maintenance of that mark. However, the dissent took aim at the majority’s reasoning, making a compelling argument that green- lighting any type of fraud harms the general public. Ultimately, the decision upended Agency precedent––of nearly fifty years–– presumably because stare decisis is no shield for ultra vires agency action. As such, this outcome is an important stepping stone in the ever-changing landscape of the reviewability of agency decisions.

Read comments and post your comment here.

TTABlogger comment: Preferred citation: Barbier, Janelle, WELCOME TO THE LAND OF TRADEMARK CANCELLATION––WHERE NOT ALL FRAUD IS CREATED EQUAL, 39 SANTA CLARA HIGH TECH. L.J. 521 (2023).

Text Copyright John L. Welch 2023.

Precedential No. 32: No Preclusive Effect in Cancellation Proceeding if Challenged Registration Survives Reexamination or Expungement

In a rather straightforward ruling, the Board held that "the termination of a reexamination or expungement proceeding in favor of a registrant cannot be the basis for the registrant’s assertion of claim or issue preclusion in a proceeding before the Board to cancel that registration." The Board therefore denied respondents' motion for judgment and resumed the cancellation proceeding. Common Sense Press Inc. d/b/a Pocket Jacks Comics v. Ethan Van Sciver and Antonio J. Malpica, 2023 USPQ2d 601 (TTAB 2023) [precedential].

In October 2020, Common Sense petitioned to cancel a registration for the mark COMICS GATE for "comics," claiming nonuse, abandonment, and fraud. In March 2023, Common Sense filed a petition to the Director under Section 1066b of the Trademark Act, requesting reexamination of the challenged registration, and at the same time moving to suspend the cancellation proceeding. 

The USPTO instituted the reexamination proceeding, informing respondents that, in order to avoid cancellation, they must submit evidence sufficient to "establish use of the mark for [comics] as of the deadline for filing a statement of use pursuant to Trademark Act Section 1(d), which is August 13, 2020."

The reexamination proceeding was terminated on January 6, 2023, the notice of termination stating that:

Upon review of the evidence of record, the USPTO determined that registrant has demonstrated use of the mark in commerce for all goods, subject to the proceeding. 37 C.F.R. § 2.93(c)(3)(i).

The evidence and arguments provided by the registrant demonstrates valid use of the relevant goods [use of the mark, not use of the goods? - ed.] in interstate commerce. Registrant has also established that the relevant goods were provided through trade channels that directly affect interstate commerce during the period of time relevant to this proceeding.

Accordingly, no change is required to the registration, and the proceeding is terminated. 37 C.F.R. § 2.94.

A person who requests institution of a reexamination [no use as of a certain date] or an expungement [no use ever] proceeding must submit "all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.” 37 C.F.R. § 2.91(c)(9). If the proceeding is instituted, the requestor has no further involvement, the matter proceeds on an ex parte basis (15 U.S.C.1066a(d); 1066b(e)), and the registrant may rebut the prima facie case of nonuse (15 U.S.C. 1066a(e), (f); 1066b(f)). If the registrant successfully rebuts the evidence and complies with all outstanding requirements, the proceeding is terminated with no change to the registration. 15 U.S.C. §§ 1066a(g), 1066b(g).

The Board began with a review of the statute and the Rules. It pointed out, although the Trademark Act contains explicit estoppel provisions that bar the filing of future expungement or reexamination proceedings as to the identical goods or services once a proceeding of the same kind has been instituted (5 U.S.C. §§ 1066a(j), 1066b(j); accord 37 C.F.R. § 2.92(d)(1) and (2)), neither the statute nor the regulations set forth a limitation on any party’s ability to petition to cancel a registration just because it is or has been the subject of a reexamination or expungement proceeding. See generally 15 U.S.C. §§ 1066a, 1066b; 37 C.F.R. §§ 2.91-2.94. Likewise, the Trademark Rules provide that “termination of an expungement or reexamination proceeding in favor of the registrant does not bar future nonuse cancellation actions under [Trademark Rule] § 2.111 with respect to the registration.”

Moreover, the statute provides that the decision to institute (or not) “shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding” except as provided in sections 1066a(j) and 1066b(j). 15 U.S.C. §§ 1066a(c)(3), 1066b(d)(3).

Apart from the statutory language, the Board observed that, since reexamination and expungement proceedings are ex parte proceedings, "they have no preclusive effect against a petitioner who seeks to cancel that same registration through a cancellation proceeding – even if that petitioner also submitted the petition requesting institution of a reexamination or expungement proceeding. See Blonder--Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329, 169 USPQ 513, 519 (1971) ("litigants ... who never appeared in a prior action [ ] may not be collaterally estopped without litigating the issue....)."

Further, inasmuch as a person who files a petition requesting institution of a reexamination or expungement proceeding is not a party to that ex parte proceeding, he or she has no right to appeal the Director’s decision in that proceeding. As we recently stated, “[i]f a party cannot appeal the outcome of an earlier proceeding, then the second action is not barred under either [claim or issue] preclusion.” Valvoline Licensing & Intellectual Prop. LLC v. Sunpoint Int’l. Grp. USA Corp., 2021 USPQ2d 785, at *7 (TTAB 2021).

On January 9, 2023, respondents filed a two-page "Notice of Termination of Re-examination and Motion for Judgment," arguing that issue preclusion should be applied with regard to Petitioner Common Sense's nonuse claim. The Board, finding no basis for claim or issue preclusion, denied the motion for judgment and resumed the cancellation proceeding.

Read comments and post your comment here.

TTABlogger comment: Difficult to see how respondents expected to succeed on this motion.

Text Copyright John L. Welch 2023.

TTAB Orders Cancellation of Registration for Configuration of Glass-Breaking Device on the Ground of Section 2(e)(5) Functionality

In a highly detailed and instructive opinion, the Board granted a petition for cancellation of a registration for the product configuration shown below, for a "spring-loaded glass-breaking device," on the ground of de jure functionality under Section 2(e)(5). The parties proceeded under the Accelerated Case Resolution (ACR) regime, waiving pre-trial disclosures and trial and submitting briefs accompanied by evidence in the form of declarations or affidavits. Trevari Media, LLC v. Laurent Colasse, Cancellation No. 92078038 (November 14, 2023) [not precedential[ (Opinion by Judge Jonathan Hudis).

The Board looked to the factors set forth in In re Morton-Norwich Prods., Inc., 671 F.2d 1332, 213 USPQ 9, 15-16 (CCPA 1982), in evaluating utilitarian functionality: (1) the existence of a utility patent that discloses the utilitarian advantages of the registered subject matter; (2) advertising by the registrant that touts the utilitarian advantages of the subject matter; (3) facts pertaining to the availability of alternative designs; and (4) facts pertaining to whether the subject matter results.

Because respondent's product (as described in the application) includes a seat-belt cutting blade, the Board referred to the product as a "GLASS-BREAKING/SEAT-BELT CUTTING Device." The purpose of the device is to help an individual escape from a vehicle in an emergency.

The Board found that all of the functional features of the device are depicted, discussed, and claimed in a European patent. The Board noted that the fact that this patent was issued in Europe has no effect on the Section 2(e)(5) analysis. See Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1478 (TTAB 2017). Since a prior patent has "vital significance in resolving the trade dress claim," respondent "must carry the heavy burden of showing that the feature[s of the device are] … not functional, for instance by showing that … [they are] merely … ornamental, incidental, or arbitrary aspect[s] of the device[.]" The Board, after a thorough review of the evidence and testimony regarding the structure and function, with many annotated illustrations, concluded that Respondent failed to meet that burden.

With regard to registrant's advertising, the Board found that "[n]early all of the graphical and textual matter on Respondent’s product packaging . . . pertains to the functional operations of the device: a seat belt cutter in an elongated and winged configuration with a window breaker in a stepped or ridged housing affixed to a keychain, used for the purpose of escaping from a car in an emergency."

As to manufacturing efficiencies, there was little evidence in the record, but it supported a finding that  the overall configuration of the GLASS-BREAKING/SEAT-BELT CUTTING Device is functional.

Finally, as to respondent's evidence of alternative designs, the Board first observed that, since it found the device to be "utilitarian functional" [a/k/a de jure functional - ed.] under the other Morton-Norwich factors, it need not consider the existence or acceptability of alternative designs. TrafFix, 58 USPQ2d at 1006-07; In re Becton, Dickinson, 102 USPQ2d at 1378; Valu Eng’g, 61 USPQ2d at 1427.

Second, respondent did not supply evidence or analysis showing that the competitors’ products or petitioner’s new product made of record "are equivalent in desired mechanical properties to those of Respondent’s design."

The EU ’787 Patent discloses the utilitarian advantages of the design of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device as shown in Respondent’s ’245 Registration. The packaging and online advertising of Respondent’s company for the Resqme product incorporating the design shown in the ’245 Registration touts the utilitarian advantages of the design. Although not totally in sync, testimony from the named inventors on the EU ’787 Patent demonstrates that the elements of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device in which Respondent claims rights were designed based on functional considerations as to (1) user operation of the device, and (2) ease of manufacture. Facts pertaining to the availability of alternative designs comprise a neutral factor here, in view of controlling case law and due to the dearth of relevant evidence and analysis.

And so, the Board found that "the design of Respondent’s GLASS-BREAKING/SEAT-BELT CUTTING Device, as shown in Respondent’s ’245 Registration, is functional based on utilitarian considerations."

Read comments and post your comment here.

TTABlogger comment: Once in a while, it feels good to put on my patent attorney hat (as long as it doesn't muss my hair.). Do you think this opinion should be precedential? If so, there's a form for that [here].

Text Copyright John L. Welch 2023.

CAFC Affirms TTAB: "EVERYBODY VS. RACISM" Fails to Function as a Source Indicator for Bags, Clothing, and Public Interest Services

In a non-precedential ruling, the CAFC upheld the Board's decision [TTABlogged here] affirming a refusal to register the proposed mark EVERBODY VS. RACISM for tote bags and various clothing items, and for the services of "promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence," finding that the phrase fails to function as a source indicator. The appellate court concluded that the Board's determination was supported by substantial evidence. In re GO & Associates, LLC, Appeal No. 2022-1961 (Fed. Cir. Nov. 14, 2023) [not precedential].

The CAFC observed that "[i]f the nature of a proposed mark would not be perceived by consumers as identifying the source of a good or service, it is not registrable," citing TMEP § 1202.04(b) (precluding from trademark protection “informational matter,” such as slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to “perceive the matter as a trademark or service mark for any goods and services.”). [Hmmm! The TMEP is not the law - ed.].

The court found GO’s challenge to be a mere disagreement with the weight the Board assigned to the conflicting evidence. But the Board "properly considered both GO’s uses and third-party uses when assessing how the public would likely perceive the mark."

GO contested this conclusion by asserting that "[p]er se refusals based on the Informational Matter Doctrine are unconstitutional" because they "involve[] content-based discrimination that is not justified by either a compelling or substantial government interest." GO Br. at 8–9 (quoting In re Elster, 26 F.4th 1328, 1331 (Fed. Cir. 2022), cert. granted sub nom. Vidal v. Elster, 143 S. Ct. 2579 (2023)). The court found this argument meritless. It pointed out that in Elster there was no issue as to whether the proposed mark TRUMP TOO SMALL functioned as a source identifier.

What is more, however, is that GO’s constitutional argument is based on a faulty premise: that the Patent and Trademark Office’s (“PTO”) application of the so-called “Informational Matter Doctrine” results in the per se refusal of any mark that contains informational matter, regardless whether or not consumers perceive the mark as source identifying. That is not true. Indeed, one can immediately envision many marks, such as GO’s own example, MAKE AMERICA GREAT AGAIN, that contain informational matter (e.g., widely used slogans), but nevertheless function as source-identifiers.

The court agreed with the TTAB that "[i] If the PTO were to allow the registration of marks that are used by the public in such a way that they cannot be attributed to a single source, the purpose of trademark law would be undermined to the detriment of the public who would be no longer free to express common sentiments without the threat of 'paying a licensing fee to someone who sees an opportunity to co-opt a political message.'"

In sum, "nothing in the Lanham Act prohibits registration of a mark containing informational matter, so long as the mark also functions to identify a single commercial source. Because EVERYBODY VS RACISM fails to meet that requirement. the court rejected GO's constitutional challenge."

Read comments and post your comment here.

TTABlogger comment: The Board's opinion is worth reading.

Text Copyright John L. Welch 2023.

And the INTA President's Award Goes to . . . Guess Who?

Well, this was an amazing surprise. My thanks to INTA for this award. It is truly an honor to join the distinguished roster of past recipients.

Read comments and post your comment here.

Text Copyright John L. Welch 2023.

TTABlog Test: How Well Do You Know Your TTAB Precedents?

Certain case names are associated with certain TTAB issues. See if you can match the case names listed below with the issue that each addressses. [Answers provided in first comment.]

	Case Name		Issue
1	Benthin	A	2(a) deceptiveness
2	Budge	B	excusable neglect
3	Converse	C	2(a) false connection
4	DuPont	D	2(e)(2)
5	Stone Lion	E	2(e)(3)
6	Morton-Norwich	F	2(d)
7	Newbridge Cutlery	G	2(f)
8	Notre Dame	H	consumer sophistication
9	Pioneer	I	2(e)(4)
10	Spirits Int'l	J	2(e)(5)

Read comments and post your comment here.

TTABlogger comment: If you put the case name in the TTABlog search engine, you will find references to the cases.

Text Copyright John L. Welch 2023.