Friday, June 12, 2015

TTAB Affirms Refusal of "SCHOOLFURNITURE4LESS" As Merely Informational

Some phrases are just too commonplace to serve as source indicators: e.g., DRIVE SAFELY, or ONCE A MARINE, ALWAYS A MARINE. Applicant Belnick, Inc. applied to register four common terms - SCHOOLFURNITURE4LESS, CHURCHCHAIRS4LESS, STACKCHAIRS4LESS, and FOLDINGCHAIRS4LESS - and the Board affirmed refusals of all four, agreeing with the PTO that the terms fail to function as service marks for retails store services. In re Belnick, Inc., Serial Nos. 85973023; 85973044; 85973069; and 85973100 (June 10, 2015) [not precedential].

Relying on numerous third-party websites, Examining Attorney Timothy Finnegan maintained that each of the applied-for marks "is merely informational and constitutes a common term or slogan that is commonly used by those in Applicant's particular trade or industry," and "does not function as a service mark to indicate the source of Applicant’s services and to identify and distinguish them from others."

Applicant contended that “the threshold of distinctiveness necessary for a mark to qualify as a trademark is quite low” and that “[i]nclusion of ‘4 LESS’ in applicant’s mark is believed to present a visual variation from the generic term ‘FOR LESS’ in that it is capable, at least at some time in the future, to function as a service mark.” Applicant also pointed to a number of third-party registrations for marks containing "4LESS" or "FOR LESS" combined with a generic term.

The Board pointed out that use of a designation or a phrase to convey advertising or promotional information, rather that to indicate source, is not service mark use, referring to many examples in prior decisions (such as GUARANTEED STARTING, WHY PAY MORE, THINK ABOUT IT). Common laudatory statements ordinarily used in business or a particular trade are not registrable (like DRIVE SAFELY, THINK GREEN, PROUDLY MADE IN USA).

Of course, the key issue is how the proposed mark would be perceived by the relevant public. "The more commonly a phrase is used in everyday parlance, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark."

Particularly pertinent was the Board's decision in In re Melville Corp., affirming a failure-to-function refusal of BRAND NAMES FOR LESS for "retail store services in the clothing field." There, the Board relied upon third-party uses to show that "it is a relatively common practice in the retail industry to make the claim that a merchant sells brand name merchandise for less than the usual price."

The Board, not surprisingly, gave no weigh to the lack of spacing between the components of applicant's mark, nor to the use of "4" instead of "four." Moreover, the terms "4 less" and "for less" are used interchangeably in the trade, and are generic equivalents indicating discount pricing.

With regard to third-party registrations, in some the phrases "4 less" or "for less" are disclaimed and the marks include additional distinctive words or designs. Others reside on the Supplemental Register. In any event, the Board asserted, the prevalent use of these two phrases in the furniture trade makes it unnecessary to focus on these other marks, even if there is some inconsistency in the PTO's treatment of the phrases. And, of course:

Although administrative consistency is a goal, these third-party registrations are not conclusive on the question of registrability of Applicant’s designation inasmuch as each case must stand on its own merits.

The Board therefore affirmed the refusals to register.

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TTABlog note: How about SCHOOLFURNITUREIVLESS [note the Roman numeral]?

Text Copyright John L. Welch 2015.


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