"WHEN THERE ARE NINE" Fails to Function as a Source Indicator for Scholarship Services, Says TTAB

The Board affirmed a failure-to-function refusal to register WHEN THERE ARE NINE, in standard character form, as a service mark for "providing educational scholarships." The Board found that the proposed mark "would be perceived by consumers as a widely used phrase showing support of Justice Ginsburg and women in the legal profession and thus, merely informational in nature rather than a source-indicator of Applicant’s service." In re Federal Bar Foundation, Serial No. 90525583 (August 16, 2023) [not precedential] (Opinion by Judge Wendy Boldt Cohen).

The issue for the Board was whether the relevant public - potential consumers of the identified scholarship services - would perceive WHEN THERE ARE NINE as indicating the source or origin of the services. [In an interview in 2015, Justice Ruth Bader Ginsberg was asked "when will there be enough women on the Court," and she replied "When there are nine."]. 

Examining Attorney Matthew Howell submitted evidence showing use of the phrase in a variety of contexts to convey support for Justice Ginsburg and her message - on websites, in media articles, as the title of a play about her, and with various items of merchandise, including framed art, clothing, key chains, coffee mugs, drinkware, pillows, pins, cups, stickers, posters, bags, luggage wraps and tags, yard signs, face masks, jewelry, greeting cards, and mouse pads.

As noted in D.C. One Wholesaler, “[t]he widespread ornamental use of the phrase [I ♥ DC] by third parties ‘is part of the environment in which the [mark] is perceived by the public and . . . may influence how the [mark] is perceived.’” 120 USPQ2d at 1716 (citations omitted).

The Board noted that the applicant used the phrase in the manner of a service mark, but that begs the question. D.C. One Wholesaler, 120 USPQ2d at 1716 (“The fact that Respondent has sometimes displayed I ♥ DC on hangtags and labels, in a non-ornamental manner that is conventional for the display of trademarks, does not require a different result.”). 

Based on the record evidence, the Board found that consumers would not perceive WHEN THERE ARE NINE as the indicator of a single source. "Rather, the record indicates that consumers would recognize the wording as conveying a message through use of a quote that is widely known to the public."

Applicant's website and press release referencing Justice Ginsberg "reinforces WHEN THERE ARE NINE as a recognized quote by Justice Ginsburg conveying her message and Applicant’s support for it."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Would a survey have helped?

Text Copyright John L. Welch 2023.