Tuesday, June 18, 2013

Precedential No. 22: WYHA? TTAB Affirms Failure-to-Function Refusal of "No More RINOs!" for Bumper Stickers, T-Shirts, and Buttons

This applicant sought to register the phrase No More RINOs!, in standard character form, for bumper stickers, clothing, and campaign buttons, but the Board affirmed the PTO's refusal to register under Sections 1, 2, and 45 on the ground that the applied-for mark is a merely ornamental or informational political slogan that fails to function as a trademark. Would you have appealed? In re Thomas J. Hulting d/b/a No More RINOs! Enterprises, 107 USPQ2d 1175 (TTAB 2013) [precedential].

The Board observed that "there are certain designations that are inherently incapable of functioning as trademarks to identify and distinguish the source of products in connection with which they are used." Common laudatory phrases ordinarily used in business or in a particular trade or industry are not registrable (E.g., ONCE A MARINE, ALWAYS A MARINE; DRIVE SAFELY; and THINK GREEN). [How about ALWAYS THINK SAFELY LIKE A GREEN MARINE? - ed.].

The key issue, of course, is how the designation in question would be perceived by relevant consumers. In that context, the Board must consider how the proposed mark is displayed on the specimens of use: the size, location, dominance, and significance of the alleged mark are all relevant factors.

Examining Attorney Tricia Sonneborn submitted evidence that "No More RINOs!" is a commonly-used political slogan meaning "No More Republicans In Name Only." The evidence showed that consumers are accustomed to seeing that phrase on bumper stickers, t-shirts, novelty pins, and other items, from a variety of sources. Consequently, they will not perceive this phrase as a source indicator, but rather as a political message or statement.

Moreover, the size, placement, and dominance of the wording on Applicant's specimens of use are consistent with informational or ornamental use, not trademark use. Even though the phrase as displayed on Applicant's t-shirt (above) is smaller than on its other specimens of use, "given the significance of the phrase, it does not have the commercial impression of a source indicator."

Applicant pointed to its substitute specimens of use [see example below], which added the tagline "By Statesman Enterprises." However, the inclusion of that tagline on the specimens made no difference in the Board's analysis, since it is not part of the applied-for mark. Finally, Applicant's intent that the slogan should function as a trademark is likewise irrelevant.

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 9:50 AM, Anonymous Mark L. Donahey said...

Bravo! We need more of these refusals. The register is littered with informational non-marks. (Sorry, no time to provide support for this assertion.)

At 10:37 AM, Anonymous Anonymous said...

WYHA? This question usually implies that you don't think the appeal was well taken. But, there are lots of factors that go into the decision to appeal besides the merits. For one, an appeal does not cost that much especially for larger entities. Second, we have all seem some strange results that you would not have predicted. Third, you may use the appeal to get the Board to adopt a position that can be used to refile an application. I'm sure there are other reasons as well. So, I guess the point is that you can't really judge these cases without more information.

At 10:59 AM, Blogger John L. Welch said...

Let me be clear. I think this appeal was not well taken. It was, in my opinion, a loser from the gitgo.

At 9:22 PM, Anonymous Anonymous said...

Agree with Mark - this is a good decision and while evidence dependent may be something of a shot across the bow at the countless pop culture applications (BOSTON STRONG being the newest flavor of the month). Particularly interesting because by placing the "mark" over the breast, the Trademark Office usually just sidesteps the ornamentation/failure to function issue.

At 9:26 PM, Anonymous Anonymous said...

What if you could show more than one meaning such as Rotarians In Name Only?, etc.

At 6:15 AM, Blogger John L. Welch said...

No more Rotarians in name only?


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