TTAB Dismisses FIRST YEAR DOWN Opposition: Failure-to-Function and Fraud Claims Fail

The Board tossed out this opposition to registration of the mark FIRST YEAR DOWN for infant and children's wear, finding that Opposer TaShae Watson's evidence fell short of proving her failure-to-function and fraud claims. Watson asserted that "First Year Down" is merely a commonplace phrase or message used by many sellers to celebrate first birthdays, and not a source indicator, and she charged that Applicant' Uzzo's specimens of use were fake. TaShae Watson v. Anthony Uzzo, Opposition No. 91277679 (December 5, 2024) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Failure-to-Function: “Matter that is widely used to convey ordinary or familiar concepts or sentiments, or social, political, religious, or similar informational messages that are in common use, would not be perceived as indicating source and is not registrable as a mark.” In re Team Jesus LLC. The Board therefore considered how FIRST YEAR DOWN is used in the marketplace and how it is perceived by consumers.

Applicant Uzzo stated that he used the mark FIRST YEAR DOWN on hangtags (above), and the words "First Year Down by Little Sweetees" on sewn-in labels and packaging.

Watson submitted evidence that she and other online sellers offer baby clothing or other goods displaying the slogan FIRST YEAR DOWN or 1st Year Down: including declarations from two other online sellers, screenshots of Etsy pages from those two sellers and others, and an Amazon.com page. However, the witnesses provided no information regarding sales volume, number of user views, customers, or the like.

Uzzo conceded that the phrase FIRST YEAR DOWN has been used ornamentally, but he argued that this "does not prevent the words from functioning as a trademark, particularly when he has used the mark consistently in other ways, such as on hang tags, collar labels and his Etsy page."

The Board found Watson's evidence to be "relatively weak and scant" to other cases where the Board found a phrase was so commonly used that it would not be considered a source indicator,

Opposer has presented no dictionary definitions, news articles, or social commentary evidencing that the phrase has found its way into the American English vernacular or popular culture, even that of families with young children. Rather, Opposer’s evidence consists of a limited quantity of products sold on online marketplaces. Although online marketplaces offering goods of third-party sellers can provide relevant evidence of consumer perception, in this case, the relatively small number of uses with an unknown magnitude of sales is insufficient to meet Opposer’s burden of proof, particularly in the absence of other evidence showing use of the phrase.

The Board was "not unsympathetic" to the plea of Opposer Watson and the declarants that they should be free to use the phrase "First Year Down" or "1st Year Down" as an ornamental feature on clothing. However, the Board expressed "no opinion on the ability to use such phrases ornamentally, and not as source indicators, even if Applicant’s mark is registered."

Fraud: Opposer Watson submitted declarations of two friends who purchased bodysuits from applicant’s Etsy site that did not have a hang tag or any other tag or label bearing the phrase “FIRST YEAR DOWN." She claimed Uzzo submitted fake specimens showing garments without the slogan on the front and with hang tags that are not actually used, to conceal the merely ornamental nature of the slogan.

The Board noted that "the testimony submitted by Opposer, a sample of two purchases, does not foreclose the possibility of products also shipped with the branded stickers" on the packaging. Applicant Uzzo explained how some items might have been shipped without the mark affixed, and he provided documentary evidence to corroborate his explanation.

The Board concluded that the evidence "does not come close to proving that Applicant submitted a fake specimen, let alone by clear and convincing evidence."

Applicant submitted testimony that the Specimen showed the mark as actually used on the goods, including at the time the Application was filed. Opposer has not undermined this testimony, either through cross-examination or other evidence. Thus, Opposer has failed to prove by clear and convincing evidence that Applicant made a false representation regarding the Specimen, and the fraud claim must fail.

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TTABlogger comment: Watch for an announcement of the commemorative TTABlog t-shirt: TWENTIETH YEAR DOWN.

Text Copyright John L. Welch 2024.