TTAB Affirms Refusal of the "Eddie Bauer Guarantee" for Failure to Function as a Service Mark
Finding that “the Eddie Bauer guarantee” does not function as a service mark to identify and distinguish Applicant’s catalog ordering services, retail store services and online retail store services, the Board affirmed a refusal to register under Sections 1, 2, 3, and 45, the standard character mark OUR GUARANTEE EVERY ITEM WE SELL WILL GIVE YOU COMPLETE SATISFACTION OR YOU MAY RETURN IT FOR A FULL REFUND. In re Eddie Bauer Licensing Services LLC, Serial No. 77585551 (May 2, 2011) [not precedential].
Bauer sought registration under Section 2(f), claiming continuous and substantially exclusive use since 1984. It submitted numerous examples of its use of the guarantee, as well as articles that reference the guarantee “to show that the public perceives the phrase as a service mark.”
Examining Attorney James T. Griffin argued that the guarantee is merely informational. He submitted “evidence of other online retailers using similar ‘satisfaction guaranteed’ wording.” Bauer countered with nine third-party registration for “guarantee” marks.
The Board observed that the critical question for determination is “the commercial impression in makes on the relevant public (i.e., whether it would be perceived as a mark or as an informational phrase).”
As to the articles submitted by Bauer, they are “not probative of consumer perceptions of the matter as a mark; rather, the articles show that business writers use the Eddie Bauer guarantee to illustrate what the writers perceive to be a successful customer satisfaction policy.”
Looking at the specimens of use, the Board found that the primary significance of the phrase is likely to be merely informational, as conveying Bauer’s guarantee policy. For example, the phrase appears in small print on the website, above the stylized Eddie Bauer signature in larger print. The signature would likely be perceived as “the service mark.” The guarantee would not be perceived any differently than the third-party guarantees submitted by the Examining Attorney.
Bauer’s third-party registration evidence was irrelevant, since the decisions made by Examining Attorneys to register those marks are not binding on the Board.
And so the Board affirmed the refusal to register.
TTABlog comment: Maybe E. Bauer should get a survey? What if you presented five "guarantees" to consumers and asked them if the phrases brought to mind any particular company? How do you think E. Bauer would fare?
What about copyright? Is there enough artistic content to merit copyright protection?
Text Copyright John L. Welch 2011.