Wednesday, September 09, 2020

"THE NEXT MOVE IS YOURS" Fails to Function as a Service Mark for Real Estate Services, Says TTAB

The Board affirmed a refusal to register the proposed mark THE NEXT MOVE IS YOURS for "real estate agency services, real estate brokerage, real estate management, leasing of real estate," on the ground that the phrase fails to function as a mark under Section 1, 2, 3, and 45 of the Trademark Act. Applicant contended that THE NEXT MOVE IS YOURS is similar to registered slogan marks (such as EAT FRESH) in that it is often used by others, conveys information, suggests an action, and functions as a trademark. The Board was not moved. In re Douglas Elliman Realty, LLC, Serial No. 88640177 (September 4, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Third-party use

The question for the Board was "whether the relevant public, i.e. purchasers or potential purchasers of Applicant’s services, would perceive THE NEXT MOVE IS YOURS as identifying Applicant’s services and their source or origin." The relevant consuming public consists of all potential purchasers of real estate agency, brokerage, management and leasing services.

Although the subject application was based on intent-to-use, a failure-to-function refusal may be issued without considering specimens of use. The Board may consider  the evidence as to third-party use of the designation in the marketplace.

Examining Attorney Kevin G. Crennan provided evidence of third party use of the phrase not only in the real estate field but in related fields. Applicant submitted third-party registrations for other slogans and taglines (e.g., WHERE’S THE BEEF, JUST DO IT, FINGER LICKIN’ GOOD, EAT FRESH), as examples of the registrability of slogans and taglines, That evidence was, of course, irrelevant to the proposed mark at issue.

Applicant argued that THE NEXT MOVE IS YOURS requires several mental steps to discern the meaning of the phrase and does not immediately and merely provide an informational message or idea, but the numerous third-party uses gave strong support to the examining attorney's position that the phrase is a commonplace message or widely used expression in many different industries that “conveys an ordinary, familiar, well-recognized concept or sentiment.”

Here, the third-party Internet evidence in the record demonstrates general use of THE NEXT MOVE IS YOURS in advertising to consumers and to businesses in a variety of industries. This evidence shows that THE NEXT MOVE IS YOURS would be perceived not as a source identifier, but instead as a widely-used phrase, specifically, a call to action or directive that the consumer or business contact the entity that is advertising the particular service.

The Board noted that the NEXT MOVE IS YOURS has a double meaning in the context of real estate services, but it is not a "significant" double entendre since both meanings are informational. "[T]he primary significance of THE NEXT MOVE IS YOURS remains a commonly used call to action by advertisers to consumers and businesses as well as an informational slogan used by realtors and moving companies."

The Board concluded that consumers will not perceive the proposed mark as a source indicator pointing uniquely to Applicant. Instead, consumers services will perceive THE NEXT MOVE IS YOURS as a commonly used informational slogan by multiple entities.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Move along. Not much to see here.

Text Copyright John L. Welch 2020.

1 Comments:

At 5:17 PM, Blogger Sylvia Mulholland said...

Getting tired of these "failure to function" refusals. Seems very nebulous. I would have thought disclaiming "move" would have gotten this through.

 

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