"PROMATCH" for Drum Sticks Identifies a Process, Fails to Function as a Trademark

The steady drumbeat of failure-to-function refusals continues, with the Board affirming a refusal to register the proposed mark PROMATCH for "drum sticks and percussion instruments" on the ground that the term identifies a process or system and therefore does not function as a trademark. Applicant pointed out that the PROMATCH text is bolded on its packaging, is accompanied by the ™ symbol, and appears in a larger size font than the remainder of the text, thereby drawing the consumer's attention to the term. The Board was unmoved. In re G4 2010, LLC, Serial No. 90281547 (December 23, 2024) [not precedential] (Opinion by Judge David K. Heasley).

There was no dispute that PROMATCH identifies applicant's process for making drumsticks. Applicant argued, however, that a term can both identify a process and serve as a source indicator. The Board agreed with that possibility but observed that it depends on the facts of the case.

Here, the trademark PROMARK appears on the packaging, along with the reference to the PROMATCH process, bringing his case "closer to precedents that had separate terms for a process and the trademark for goods produced by that process."

[W]e believe that purchasers viewing Applicant’s current packaging and advertising would associate PROMATCH with the process used to enhance the PROMARK drumsticks’ “level of quality.”

Applicant's asserted that PROMATCH is a coined term, but the Board brushed that off without missing a beat: "the issue is not whether the term is coined; it is whether the term, as presently used, points to the process by which the identified goods are produced, rather than the goods themselves." Similarly the sizing and boldness of the font was not relevant, and "the mere use of the letters ‘TM’ on a product does not make unregistrable matter into a trademark.”

[W]e find that PROMATCH, as used on the specimens of record, has not yet been used as a trademark for the “drum sticks and percussion instruments” identified in the application, but solely as a term for the process by which they are manufactured.

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Text Copyright John L. Welch 2024.