Monday, November 16, 2020

Hell Freezes Over! TTAB Reverses Failure-to-Function Refusal of JUST ANOTHER DAY IN PARADISE

The Board reversed a failure-to-function refusal of JUST ANOTHER DAY IN PARADISE for a variety of items in nine classes, such as candles, flatware, lamps, and Christmas ornaments. The Board concluded that the record evidence failed to show that the proposed mark "is a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark." In re Rodeowave Entertainment, LLC, Serial No. 87801076 (November 13, 2020) [not precedential] (Opinion by Judge Christen M. English).



The Board observed that slogans that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used particular business or industry, are not registrable. "The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”

The question of whether JUST ANOTHER DAY IN PARADISE "is inherently capable of functioning as a mark for the identified goods depends on whether the relevant public, i.e. purchasers and potential purchasers of Applicant’s goods, would perceive the phrase as identifying Applicant’s goods and their source or origin." The subject application was filed on an intent-to-use basis, and there was no evidence of applicant’s use of the phrase. However, there was evidence of third-party use in media and on a range of home décor, household goods, and clothing items. (examples depicted above and below). "Prominent ornamental use of an applied-for-mark ... 'is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.'"

The nature of the message conveyed by the proposed mark is also pertinent. Familiar, commonplace expressions and slogans "used to convey social, political, patriotic, religious, and laudatory concepts are more likely to be perceived as imparting information than signifying source." (E.g., ONCE A MARINE, ALWAYS A MARINE; THINK GREEN; DRIVE SAFELY; PROUDLY MADE IN USA; WATCH THAT CHILD).



The evidence here does not demonstrate that the applied-for-mark is used in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message. In most of the media examples of record, the applied-for-mark is primarily used as the title of creative works rather than for any apparent common informational message.

The examining attorney maintained that the mark does not convey any clear or specific message, but rather is subject to a number of different interpretations; for example, "taking pleasure in small things" or "getting away from one’s troubles." [I think it conveys a sarcastic message - ed.]. The Board concluded that this potential ambiguity "makes it less likely that consumers would perceive it as conveying a particular informational message and distinguishes it from the types of well-recognized and unequivocal expressions found to be incapable of serving as source identifiers."


Although widespread use may be enough to render a term or phrase incapable of functioning as a trademark, regardless of the type of message - for example, I ♥ DC, ONCE A MARINE, ALWAYS A MARINE, DRIVE SAFELY - the use of the proposed mark "is not sufficiently widespread such that we can find it inherently incapable of serving as a source identifier even though the record does not demonstrate that the applied-for-mark is a familiar expression with a generally understood meaning."


And so the Board reversed the refusal.


Read comments and post your comment here.

TTABlogger comment:What do you think? Seems like a commonplace, unregistrable slogan to me.

Text Copyright John L. Welch 2020.

9 Comments:

At 9:53 AM, Blogger Carole Barrett said...

I'm with JLW....Seems like a commonplace, unregistrable slogan to me.

 
At 9:57 AM, Anonymous Anonymous said...

When clients ask how an ex parte proceeding is going to turn out: ¯\_(ツ)_/¯

 
At 10:27 AM, Anonymous Anonymous said...

Seems like a commonplace slogan to me too. I really wonder why they didn't fill the record with internet references to it - which I'm sure there are many.

I suspect that if this case had gone the other way you would have called it a WYHA. Just goes to show you - you never know.

 
At 11:44 AM, Blogger Miriam Richter, Esq. said...

As I sit at my desk typing this, I can look out my window and see gorgeous blue skies, beautiful scenery, people walking around in shorts, and my phone tells me its 84 degrees - down here, in S. Florida, we say it ALL THE TIME - it's just another day in paradise! Interestingly enough, the applicant is from Virginia, so who knows what it means to them. I think geography plays a big part in this one!

 
At 12:25 PM, Blogger Stacey Friends said...

This is an interesting case. I am with you, I view this slogan as sarcastic - used when things are not going well. Apropos now, for example, with COVID-19. (Works best with an eye roll). So through this lens, I think the mark could be viewed as ironic or incongruous. For those taking it literally, I suppose there is a case for it being suggestive of the specific goods.

 
At 2:23 PM, Anonymous Amy Everhart said...

I'm the attorney who briefed this one! I have seen an increase in failure-to-function rejections in my own practice in the last couple of years (to the point where we are overly paranoid about warning our clients in our trademark evaluations), so I was thrilled to get this decision. I don't see how my client's using this mark on a line of sofas monopolizes the use of the phrase by others in an ornamental way or in their catchy newspaper headlines. It just was not THINK GREEN or I {HEART} NEW YORK. Getting that failure-to-function rejection (similar to the ever dreaded surname rejection) is no longer the kiss of death!

 
At 12:09 PM, Anonymous Catherine Cavella said...

Like Amy Everhart, I am glad the TTAB has finally drawn a line to rein in "widely used slogan" refusals. But this mark to me also seems like a saying going back many years and used decoratively. I'm from Southern California, so perhaps like the commenter from S. Florida I find it ubiquitous because it is common in beach resort locales only. So perhaps it is sufficiently region-specific that as a trademark for items having nothing to do with beach resorts and if used non-decoratively. It's not "Have a Nice Day", sure. But I am genuinely surprised they came out this way on JADIP. I have fought tenacious Examiners on phrases much less common than this. I'm curious to see if this result encourages more Examiners to lighten up a bit.

 
At 2:55 PM, Anonymous Phoenix Trademark Attorney said...

Amy – congrats on a job well done for your client. For those who aren’t aware, the applicant here is a country record label, I think mostly featuring Phil Vassar. Just Another Day in Paradise was a decently-charting song Vassar released in the summer of …. 2000. Maybe Vassar’s merch offerings will really expand after this decision, but I like the idea of a 1(b) app being filed 20 years after its namesake song peaked the charts.

 
At 4:03 PM, Anonymous Amy Everhart said...

Also to give some flavor to it in response to some of the other comments, the applicant company is affiliated with country artist Phil Vassar, who has a well known song, "Just Another Day in Paradise," that has become a signature for him. I quoted the song lyrics in the argument to show how the phrase was used there. The problem here is the subjective nature of such decisions by the examining attorney. Slogans are registered all the time, as are common words. You can Google "apple" and find a million references to it as well -- it doesn't mean you can't register the word in connection with your brand (as least you couldn't before it was taken and turned into a famous mark). The case law that has developed in supporting rejections for very commonplace slogans seemed to allow for such findings in extreme cases where monopolizing a mark would be against the public interest, such as in THINK GREEN or DRIVE SAFELY. Where do you draw the line, and how does this differ from preventing commonplace words, as opposed to phrases, from registration? There is another similar matter pending before the TTAB that we were watching, filed by a colleague of mine here in Nashville (a former USPTO examining attorney), involving efforts to register the mark GOD BLESS THE USA by Lee Greenwood in connection with a home goods line. It will be interesting to see where they fall on that one, which does seem like a more commonplace phrase. I could not wrap my brain around how registration of JUST ANOTHER DAY IN PARADISE for a line of home goods would prevent the types of uses the examining attorney found online -- ornamental uses on mugs and T-shirts on the likes of Dazzle that would be permitted anyway (many of which were likely there because of the Phil Vassar song), or uses in literary titles or newspaper headlines that would be permitted anyway.

 

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