Wednesday, August 02, 2017

"STILL SPOONING" Fails to Function as a Mark for Custom Imprinting and Retail Services, Says TTAB

The Board sustained these consolidated oppositions to registration of STILL SPOONING for "Custom imprinting of flatware and fishing lures" and for "On-line retail store services featuring a wide variety of consumer goods," finding that the term fails to function as a service mark. Instead, the Board found, the proposed mark would be perceived "as an informational or sentimental slogan on Applicant's flatware and lures, and not as a service mark" for the recited services. Milk & Honey LLC v. Melissa Beeson, d/b/a Spoon Tracker, Opposition No. 91221098 and 91222928 (July 28, 2017) [not precedential] (Opinion by Judge Thomas Shaw).

If a proposed mark does not function as a mark to identify and distinguish an applicant's services, then a refusal to register under Sections 1, 2, and 45 of the Trademark Act is appropriate. "[N]ot every designation that is used in connection with services necessarily functions as a service mark and not every designation adopted with the intention that it perform a service mark function necessarily does so."

Applicant contended that the issue of ornamentality does not apply to service marks, but the Board disagreed. For example,  in In re Chevron Intellectual Property Grp. LLC, 96 USPQ2d 2026 (TTAB 2010), the Board found that gasoline pump signage is a "mere refinement of a commonly used form of a gasoline pump ornamentation rather than an inherently distinctive service mark for automotive service station services."

The issue for the Board was to determine how the proposed mark would be perceived by the relevant consumers. In order to make that determination the Board looked to the specimens of use and other evidence as to how the purported mark is actually used.

Applicant offers its services on the Etsy website. The terms SPOONTRACKER and SPOON TRACKER appear prominently at the top of the webpage and in the largest font. Given the prominence of these terms and their close proximity to the wording describing applicant's services, consumers would likely view these terms as identifying the source of applicant's custom imprinting and retail services.

The words STILL SPOONING are much less prominent and are not closely associated with any wording describing applicant's services, but the phrase does appear on two fishing lures and on seven utensil sets.

The Board found that STILL SPOONING fails to function as a service mark because it would be perceived by the relevant public as merely referring to the inscription on the the flatware and lures, rather than to applicant's services. This finding was based in part on the "commemorative nature" of STILL SPOONING, which term is "likely to be perceived by consumers as a sentimental expression celebrating personal relationships."

The Board observed that slogans and the like that are considered to be merely informational, or that express support, admiration or affiliation, are generally not registrable. (E.g., ONCE A MARINE, ALWAYS A MARINE; I ♥ DC; BRAND NAMES FOR LESS).

Applicant's intent that the term function as a mark was irrelevant, as was applicant's use of the "TM" symbol adjacent the term.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I wonder if STILL FORKING is registrable. After the Tam decision, probably so. Seriously, though, there seems to be a difference between an "ornamentality" refusal and an "informational" refusal: the former may be overcome by showing acquired distinctiveness, I think, whereas the latter cannot be.

Text Copyright John L. Welch 2017.


At 1:16 PM, Blogger Shane Curcuru said...

Thanks for making the latter correction in the latter paragraph, it makes more sense now.

Isn't the (well, one of) main issues the fact that the applicant wasn't prominently using the mark in their samples?

If the applicant changes their Etsy website to use STILL SPOONING in all the prominent places on their website and to clearly talk about their 1) products bearing that for sale, and 2) their service of stamping things on spoons, couldn't they come back and re-apply?

Or rather, my real question is: if they had done that first, would the application likely have been granted?

Thanks for keeping tabs!

At 1:47 PM, Blogger matthew h said...

Per the new Merely Informational Exam guide, an "ornamentality" refusal can be overcome by showing acquired distinctiveness, but "informational" cannot.

At 6:50 PM, Blogger John L. Welch said...

I think that if the applicant had used STILL SPOONING more prominently on the website, it might have worked as a service mark. I don't see "Still Spooning as an ubiquitous phrase like "ONCE A MARINE, ALWAYS A MARINE" or "I LOVE DC", which are incapable of becoming trademarks.


Post a Comment

<< Home