Tuesday, June 25, 2013

TTAB Affirms Failure-to-Function Refusal of Universal Peace Symbol

Craigslist, Inc. applied to register "a peace symbol" in the color purple, as a service mark for various on-line services, but the PTO refused registration under Sections 1, 2 and 45 of the Trademark Act on the ground that the purported mark is a universal symbol that cannot be registered without the addition  of distinctive matter. The Board agreed with the PTO. In re Craigslist, Inc., Serial Nos. 77956067; 77956069; 779560701 (May 31, 2013) [not precedential].

Evidence submitted by Examining Attorney Marc J. Leipzig demonstrated that the proposed mark "is the universal symbol that conveys the message of supporting peace," and that "the peace symbol is commonly used in virtually any context and always conveys the message of peace." Therefore  "without the addition of distinctive matter, the peace symbol cannot serve a source-indicating function and may not be appropriated by one entity."

Section 1202.17 of the TMEP deals with "universal symbols." A universal symbol fails to function as a mark "because it only imparts information, conveys an informational message, or provides ornamentation,” and its significance is based on the underlying message and not on any source-identifying function.

The Examining Attorney argued that the peace symbol is a "pervasive universally-recognized symbol (and has been for over fifty years) that would not be perceived as belonging to any one party or separating one person’s goods or services from those of another party.…" Instead it is "ubiquitous, non-distinctive icon, instantly recognizable to the general public in any context." The Board agreed.

Applicant Craigslist pointed to several third-party registrations for mark comprising the peace symbol, but in each case the mark included other distinctive elements. For example:

Craigslist also pointed to its prior registration of a peace symbol for downloadable software, arguing that its prior registration "demonstrates secondary source." The Board, however, ruled that the peace symbol is unregistrable and "cannot be considered as a secondary source or acquire distinctiveness based on its prior registration." The prior actions of the PTO in granting a registration are not binding on the Board, since each case must be decided on its own merits.

Addition of the color purple did not help Craigslist because the evidence showed the peace symbol used in the color purple in a variety of contexts. In short "the overall impact and impression of the universally-known peace symbol remains unchanged."

Because the Board found that the standard peace symbol does not function as a mark and is unregistrable, it was unnecessary to address Craigslist's claim of acquired distinctiveness.

And so the Board affirmed the refusal.

Read comments and post your comment here.

Text Copyright John L. Welch 2013.


At 9:14 AM, Anonymous Gene Bolmarcich, Esq. said...

I wonder how many symbols would fall into this category of "never able to function as a mark, no matter how much secondary meaning". Except for generic terms I have to admit I never knew there was such a category of marks. As I've written before "failure to function" is a function of HOW a mark is used and not a function of the inherent quality of a mark. Is it because it communicates a message? It can't be because it's ubiquitous because so are green squares (H&R Block), "targets" (um, Target), and more if I had the space. Why doesn't the USPTO just publish a list so we'll all have notice?

At 2:38 PM, Anonymous Orrin A. Falby said...

Good point Gene - The following is taken from the Loufrani/Walmart proceeding concerning registration of a SMILEY FACE icon: "Common expressions and symbols (e.g., the peace symbol, ‘smiley face,’ or the phrase ‘Have a Nice
Day’) are normally not perceived as marks”); In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (“We fully agree with the Examining Attorney that this relatively common merchandising slogan [WHY PAY MORE!] does not act or function as a mark which identifies and distinguishes applicant's services from those of others”); and In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984)(WATCH THAT CHILD displayed on the front bumper of trucks does not
function as a trademark for construction material)."

However, the Board went on to find that Walmart had produced sufficient evidence to prove secondary mening of its SMILEY FACE icon.

At 7:52 PM, Anonymous Gene Bolmarcich, Esq. said...

Yes, it seems like a reasonable rule for words but not for symbols. How can the TTAB make a blanket rule that a peace symbol simply can not function as a trademark? I don't know about the TTAB, but I don't often see peace symbols being used in a trademark manner on products or for services. Sure the peace symbol is well known in a different context but so is the word APPLE. I think there is some practical basis for the ruling but it is a terrible decision from a pure trademark theory standpoint because of the slippery slope created. How can there be a "rule" which probably only covers two or three symbols (peace, um, um... hearts?). Just because a symbol has a communicative function is no reason to make it ineligible as a trademark. Such a rule would invalidate MANY trademarks and all slogans.


Post a Comment

<< Home