Tuesday, August 24, 2010

Test Your TTAB Judge-Ability: Is "ONCE A MARINE, ALWAYS A MARINE" on Clothing a Trademark, Or Merely Informational?

Eagle Crest applied to register the mark ONCE A MARINE, ALWAYS A MARINE for various clothing items. The Examining Attorney refused registration, maintaining that the phrase, as it appears on the specimens of use (see photos below), would be perceived as merely informational and not as a trademark. Applicant appealed. How would you decide? In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) [precedential].

The Board began by observing that "not every designation adopted with the intention that it performs as a trademark and even labeled as a trademark necessarily accomplishes that purpose." Some designations are "inherently incapable of functioning as trademarks." The crucial issue is public perception.

Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.

Here, Eagle Crest admitted that the phrase ONCE A MARINE, ALWAYS A MARINE is a "motto associated with and used by and about marines by them and their admirers." Said the Board: "There is no dispute that the phrase ... is an old and familiar Marine expression, and as such it is the type of expression that should remain free for all to use." In fact, the evidence showed that it is commonly used by others as informational and ornamental matter on t-shirts and other items. "Applicant is not entitled to appropriate the slogan to itself and thereby attempt to prevent competitors from using it to promote the sale of their own clothing."

Applicant's manner of use of the slogan likely reinforces the perception of ONCE A MARINE, ALWAYS A MARINE as merely informational. Applicant's website offers this slogan along with eight other military or patriotic messages that the consumer may choose for imprinting on a clothing item. Clearly, consumers want to display their support for the Marines.

Eagle Crest asserted that other common Marine expressions, such as "HOOAH!" and "GUNG-HO!" are "trademarked." The Board perceptively remarked, "It is not clear what applicant means by 'trademarked," and it then pointed out that the other registrations for mottos or slogans are irrelevant to the case at hand.

And so, the Board affirmed the refusal.

TTABlog comment: Hooray for the Board in pointing out that "trademark" is not a verb. But I wonder about the Board's statement that ONCE A MARINE, ALWAYS A MARINE could never be a trademark. Does it depend on usage? What if the slogan appeared only on the sewn-in label of the garment and was not viewable when the garment is worn? Would it be just informational in that case? Or is the slogan unregistrable anyway, because such a registration would hinder use by others.

If the latter, where do you draw the line between unregistrable common phrases and registrable ones?

Text Copyright John L. Welch 2010.


At 10:30 AM, Anonymous Anonymous said...

I understand the finding and law. But is it good public policy?

Why should the law deny this applicant a trademark registration? His mark is applied to the goods and assuming it is distinctive, can very easily be a source indicator. Why presume it is not a source indicator? Best guess I have is to allow bureaucrats to interfere with commerce.

At 11:33 AM, Anonymous Rob said...

@ Anonymous: Of course it's going to be bureaucrats. Who did applicant expect to adjudicate its trademark application, the free market?

That said, since applicant made no claim of acquired distinctiveness, any determinations that the phrase could never gain distinctiveness were unnecessary dicta.

At 1:40 PM, Anonymous Anonymous said...

This is consistent with what appears to be a hard and fast office policy of not accepting any specimen that appears on the front a shirt. It is always found to be ornamental. For some reason that is not always the case with a hat though.

In any case, I would never submit a specimen using a mark that appears on the front of a shirt. Even if it does appear on the front I would not submit it to raise a flag. Tags, padprints, hang tags, etc. are always the way to go.

At 8:35 PM, Anonymous Martin said...

I think the Board (and the Office) made the right decision here. Typically, trademark usage on the front of shirts needs to be what is often referred to as "neat and discrete" usage on the breast pocket area of the shirt (e.g., the POLO horse, the LACOSTE alligator, etc.). Personally, I feel the use in this case didn't immediately fall in line with uses typically found in the clothing industry, perhaps because of the fact that there was evidence that the slogan was widely used. Therefore, it tipped the scales away from finding the use to be trademark use.

However, I don't agree with the Board that this slogan could never be used as a trademark. If it had been sewn on a label, or even perhaps used on a hangtag (where consumers typically look to see who is the source of the goods), then I think that it should have been allowed registration.

And I used to be an examiner with the Office, and there is no "hard and fast office policy" about refusing trademarks that appear on the front of clothing. However, it does seem that most attorneys who submit specimens don't understand what ornamentation entails, and don't understand that the mark must be used in a trademark manner (like the LACOSTE and POLO examples above), otherwise it appears as though potential consumers are simply purchasing the shirt because they like the slogan, not because they believe the slogan indicates source. It all depends on the practices of the trade with respect to any specimen, and (like in this case) the nature of the mark itself.

At 4:22 PM, Anonymous Nitin said...

Still wondering why the Board said,"other registrations for mottos or slogans are irrelevant to the case at hand." On the other hand, in Cartier's proceedings some time ago, it were the previous registrations that the TTAB relied heavily on for rendering its opinion.

At 10:10 AM, Anonymous Orrin A. Falby said...

I agree with Martin's analysis. I have had the opportunity to argue against an ornamental refusal for Polo with regard to a design containing three horses, as opposed to one, and have used the "practice in the trade argument" to overcome the refusal. The applicant in this case should consider filing for the composite mark that appears on the specimen. I think they stand a better chance of getting that registered.


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