Monday, April 30, 2012

On Remand from CAFC, TTAB Affirms Failure-to-Function Refusal of ONE NATION UNDER GOD for Charity Bracelets

In 2009, the CAFC vacated the TTAB's decision rejecting Applicant Michael Sones' specimen of use (CAFC decision TTABlogged here) for the mark ONE NATION UNDER GOD for "charity bracelets." The Board then remanded the application to the PTO to "consider the evidence as a whole to determine whether applicant’s webpage specimen sufficiently associates his mark with his charity bracelets so as to identify and distinguish the goods." Examining Attorney Brian D. Brown refused registration on the grounds that the phrase "fails to function as an indicator of source because it is informational and is merely ornamental." Sones appealed. The Board affirmed the refusal. In re Michael Sones, Serial No. 78717427 (April 20, 2012) [not precedential].

Procedural issues: Sones maintained that it was improper to raise new grounds for refusal on remand of the case. The Board was unmoved. It pointed out that it reviews only substantive issues; Sones should have petitioned to the Commissioner if he wanted to raise this procedural issue.

Sones also complained that he did not have an opportunity to rebut the evidence included by the Examining Attorney in the final office action, but the Board pointed out that he should have requested remand if he wanted to put in rebuttal evidence.

In a footnote, the Board observed that the PTO "has the inherent right to raise a refusal of registration, as the mandate of the Office is to issue registrations only for valid marks."

Substantive issues: The Board first looked at the "informational" refusal. The Examining Attorney contended that "ONE NATION UNDER GOD is such a common phrase universally signifying a sense of patriotism and displayed for the message it conveys that it is incapable of being perceived as a trademark in this case." He cited numerous websites demonstrating that ONE NATION UNDER GOD is a well-known phrase from the Pledge of Allegiance, frequently mentioned in articles and used by third parties in connection with the sale of their products.

The Board pointed out that, just because the phrase appears in the Pledge of Allegiance does not make it ineligible for trademark status. But the numerous third-party uses are "strong support for the examining attorney’s position."

The evidence shows that the use of ONE NATION UNDER GOD for various products, including jewelry and wristbands, is ubiquitous, and that these third parties use the phrase to provide information about their goods.

The use of the "TM" symbol by Sones does not necessarily mean that consumers will perceive the phrase as a trademark. Moreover, Applicant’s use of the purported mark must be considered in the context of the third-party uses for similar wristbands.

The Board concluded that the phrase, as used by Sones, would not be viewed by consumers as a source indicator for charity bracelets, but merely as giving information about them.

In light of this finding, the Board declined to consider the "ornamental" issue.

TTABlog comment: I think the phrase in question is more ornamental than "informational." What "information" does it convey?

In any event, I'm surprised that the Board did not cite its relatively recent precedential decision in In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) [
TTABlogged here], wherein it held that the phrase ONCE A MARINE, ALWAYS A MARINE would be perceived merely as informational and did not function as a trademark for Eagle Crest's clothing items.

Text Copyright John L. Welch 2012.


At 10:09 PM, Anonymous Anonymous said...

Totally ornamental. I don't understand this opinion at all. I was an examiner in the hayday of all of these plastic charity bracelets, and we were given clear instructions that 9/10 it's ornamental. Think about it -all he needs a plastic sleeve with a stupid sticker on it - THAT would be a good specimen, and this whole issue would have been put to bed a long time ago.


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