TTABlog Test: Does "MAKE YOUR PASSION YOUR PAYCHECK" Function as a Source Indicator for T-Shirts?

The USPTO refused to register the proposed mark MAKE YOUR PASSION YOUR PAYCHECK for "Hats; T-shirts; Hoodies; Knit face masks being headwear" on the ground that the phrase is an expression commonly used by multiple sources and therefore is not perceived as a source indicator. Applicant argued that the Office's evidence - some 14 third-party uses of the phrase and its variants - was insufficient to show how the mark is perceived by the general public. How do you think this came out? In re GFactor Enterprises, LLC d/b/a Gfactor Films, Serial No. 90976324 (May 5, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

Matter that does not serve to indicate the source or origin of the identified goods and distinguish them from others does not meet the statutory definition of a trademark. Common terms or phrases that consumers "are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments" fail to function as trademarks. [Think the "f" work, for example -ed.].

However, when the evidence is insufficient to show that a proposed mark has been widely used in connection with the goods at issue, it is improper to refuse registration on the ground of failure-to-function. The critical issue, of course is how the relevant public perceives the proposed mark.

During prosecution, the Examining Attorney provided a limited number of third-party uses (14 in all) of MAKE YOUR PASSION YOUR PAYCHECK, and its variants, by motivational speakers, professional coaches, career planners, and in articles and other printed materials in a variety of different contexts. As we note above, some third-party uses are service mark uses. Others are titles of books, or emblazoned in an ornamental manner on t-shirts or artwork.

The Board concluded that the record "does not uniformly demonstrate commonplace third-party use of MAKE YOUR PASSION YOUR PAYCHECK, and its variants, in relation to the common topic of self-help and motivation to convey the well understood message that one should do what they love, and make money doing so – as argued by the Examining Attorney."

Due to the mixed record presented by the Examining Attorney, we cannot say that, in view of the wide usage of the phrase, consumers of Applicant’s goods are consistently accustomed to seeing this phrase used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments such that they could not attribute the phrase to a single source.

And so, the Board reversed the refusal to register.

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TTABlogger comment: NB: The fact that the phrase appears on the sewn-in label does not by itself make it a mark. See D.C. One Wholesaler, Inc. v. Chien. But the fact that others use the phrase as a source indicator was significant.

Text Copyright John L. Welch 2023.