Does "FIRST LOOK" Fail to Function as a Source Indicator for Retail Membership Club Services?

Failure-to-function is the original sin of trademark law. If consumers don't or won't perceive a term as indicating source, then the term is not a trademark (or service mark). The USPTO refused to register the proposed mark FIRST LOOK on the Supplemental Register, for "Membership club services in the nature of providing discounts to members in the field of retail of luxury goods," on the ground of failure-to-function. Examining Attorney Jacob Magit maintained that consumers would perceive “FIRST LOOK” "as merely informational, indicating that the benefits of Applicant’s membership club services include the opportunity for members to purchase goods before they are available to the general public. How do you think this appeal came out? In re The RealReal, Inc., Serial No. 97232753 (December 11, 2024) [not precedential] (Opinion by Judge Mark Lebow).

"One way a proposed mark fails to function is if consumers will view it as a merely informational slogan or phrase instead of something that 'point[s] out distinctively the origin of the goods [or services] to which it is attached.'" In re Brunetti, 2022 USPQ2d 764. “Matter may be merely informational and fail to function as a trademark if it is a common term or phrase that consumers of the goods or services identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments.” Id.

The examining attorney relied on dictionary definitions of the constituent words, a Wikipedia entry, and Internet evidence showing use of the term FIRST LOOK by at least 31 third parties in their promotion of retail membership services in a variety of fields.

As the evidence clearly shows, FIRST LOOK is a widely-used term used to describe a particular benefit of membership services, namely, a benefit that provide members with a first look at new products or services, often with the opportunity to purchase them at exclusive membership discounts.

Applicant acknowledged in its brief that "businesses seem to use 'FIRST LOOK' to identify a benefit/perk as part of their respective membership programs." Moreover, applicant displays the wording FIRST LOOK together with EARLY ACCESS and the phrases "Shop the Best Luxury First" and "Get 24-hour advanced access to new arrivals."

In addition to several other feeble arguments, applicant contended that most of the Office's evidence did not show how potential purchasers in the field of luxury goods would perceive FIRST LOOK.  The Board disagreed, noting that the evidence "spans a variety of industries, including those that arguably fall within the field of luxury goods, such as the evidence from Tommy Hilfiger, Williams Sonoma, Crate & Barrel and others."

And so, the Board affirmed the refusal under Sections 1, 2, 3 and 45 of the Act.

Read comments and post your comment here.

TTABlogger comment: Compare this case to the FIRST YEAR DOWN reversal blogged a few days go. There the applicant did not shoot itself in the foot by its own usage, and the Board pooh-poohed the third-party uses because of lack of information regarding sales, etc.  Here, there was no such information, but the number of third-party users was greater.

Text Copyright John L. Welch 2024.