“QUESTION OF THE DAY” Fails to Function as a Mark for a Trivia Website, Says TTAB

[This guest post was written by Kira-Khanh McCarthy, a rising-3L at University of Notre Dame Law School.] The Board affirmed a refusal to register the phrase QUESTION OF THE DAY, finding that it fails to function as a mark for trivia website services. The analysis closely resembled that of an earlier decision when the same applicant, Trivia Today, sought to register the marks OOPS! WRONG ANSWER. and CONGRATULATIONS! YOU ARE CORRECT! In re Trivia Today, LLC, 2019 WL 931661 (TTAB 2019) [TTABlogged here]. Similar to the above-mentioned case, here Applicant asserted that its specimen “prominently display[s] and emphasiz[es] QUESTION OF THE DAY with a pink banner/background” so that consumers know the trivia emails come from a single source. Rejecting this argument, the Board found that "because the applied-for mark is merely informational  . . . and because it is commonly used by multiple sources, it does not identify and distinguish Applicant’s services from those of others." In re Trivia Today, LLC, Serial No. 86745391 (June 28, 2019) [not precedential] (Opinion by Judge David K. Heasley).

According to the Lanham Act, to function as a service mark, the applied-for mark must “identify and distinguish the services of one person . . . from the services of others and . . . indicate the source of the services, even if that source is unknown.” 15 U.S.C. § 1127. In determining whether a phrase can function as a service mark, the inquiry lies in “how it would be perceived by the relevant public.” In re Tracfone Wireless, Inc., 2019 WL 2511861, at *2, 2019 U.S.P.Q.2d 222983 (TTAB 2019). The Board will accordingly assess the specimen of use and evidence of record showing the phrase as used.

Applicant submitted a sample trivia question, pictured above, as its specimen. It contended that because the display emphasizes QUESTION OF THE DAY in a pink banner, consumers “obviously know that the trivia email services are from the same single source.” Examining Attorney Lauren E. Burke maintained that the phrase “QUESTION OF THE DAY” is used “to convey information to consumers that a question is being presented, but does not convey any information about the entity providing the question.” The Board agreed with the Examining Attorney, observing in particular the positioning of the proposed mark in the specimen: “The phrase’s position immediately above the daily trivia question to which it alludes, and the multiple-choice answers appearing immediately under the trivia question, reinforces the perception that its function is information, rather than source-indicating.” In re Tracfone Wireless, 2019 WL 2511861, at *2 (citing In re Keep a Breast Found., 129 USPQ2d 1869, 1881 (TTAB 2017)).

Furthermore, in light of the Examining Attorney’s third-party evidence, the Board pointed out that QUESTION OF THE DAY is a commonly used phrase. “Common use of a phrase by third parties merely for the purpose of imparting information makes it less likely that the public will perceive it as identifying a single commercial source and less likely that it will be recognized by purchasers as a trademark.” In re Wal-Mart, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019). Citing both In re Volvo Cars of N. Am. and McCarthy on Trademarks, the Board determined that the phrase must remain in the public domain for use by competitors. And so, the refusal to register was affirmed.

Practice Tip: Before discussing the merits of the appeal, the Board also addressed an evidentiary issue. As evidence in its request for reconsideration, Applicant submitted a list of registered and applied-for marks containing the phrase “OF THE DAY.” However, per TBMP § 1208.02, the Board agreed withe the examining attorney that a mere listing of applications and registrations does not make them part of the record. "To make third party registrations part of the record, Applicant should have submitted copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal."

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KKM comment: For all who may be wondering, the correct answer to the trivia question is Vatican City.

Text Copyright Kira-Khanh McCarthy 2019.