Wednesday, December 27, 2017

DESIGNED WITH YOU IN MIND Fails to Function As a Service Mark, Says TTAB

The Board affirmed a refusal to register the applied-for mark DESIGNED WITH YOU IN MIND under Sections 1, 2, 3, and 45 of the Trademark Act, finding that the phrase is a "common informational message that fails to function as a service mark" for "wholesale distributorship services featuring consumer goods, namely, floor covering such as rugs and mats, flooring material such as laminates, bedding linens, animal beds, and bathroom accessories." Applicant Dynamix pointed to eight registrations for the identical phrase for various goods and services, but to no avail. In re Home Dynamix, LLC, Serial No. 87116576 (December 21, 2017) [not precedential] (Opinion by Judge David K. Heasley).

Informational phrases or slogans commonly used in advertising or promotions are not typically perceived as source indicators. They do not identify and distinguish one person's goods or services from those others, and they are merely informational and fail to indicate source.

The critical inquiry for the Board was this: Would the phrase DESIGNED WITH YOU IN MIND be perceived as a source indicator or as a common informational phrase or slogan? "That perception turns on the proposed mark's wording and the nature and context of its use in the marketplace."

Examining Attorney Emma Sirignano pointed out that in applicant's specimens of use, the phrase DESIGNED WITH YOU IN MIND is subordinated to applicant's more prominent HOME DYNAMIX mark. Newspaper excerpts retrieved from LEXIS showed use of the phrase by others in an informational manner, including examples from flooring showroom and wholesale businesses.

Applicant Dynamix argued that none of the examples cited by the examining attorney use the phrase in the context of wholesale distributorships for home products. Applicant caters to wholesale buyers, namely retailers, and not to retail consumers. The retailers, applicant contended, would perceive the phrase as a source indicator.

The Board found that applicant failed to rebut the examining attorney's evidence. A typical use of the phrase is to convey the idea that the goods are suitable for the intended customers. Applicant's specimens of use confirmed this informational interpretation: the slogan appears in small print in the phrase "Rugs|Mats|Linens - Designed With You In Mind™." The phrase would be perceived as modifying the list of home furnishings that precede it. The use of the "TM" symbol merely indicates applicant's intent that the phrase function as a mark, but does not transform the phrase into a trademark.

The term "YOU" could refer to retailers or to the end users, but they have a common interest in obtaining goods that are suitable for the intended purpose. The third-party evidence demonstrated the general use of the phrase in advertising directed to both consumers and businesses. Consumers and competitors would view the phrase as informational matter that all competitors may use.

Dynamix questioned how the examining attorney "could possibly know what consumers are 'accustomed to perceiving' without the benefit of any consumers surveys on the subject." The Board pointed out, however, that examining attorneys "with their limited resources, are not expected to conduct market surveys." If the examining attorney, as here, submits dictionary definitions, specimens of use of the applied-for mark, newspaper articles, and third-party Internet evidence, to support the refusal, the burden shifts to the applicant to show otherwise.

Applicant submitted copies of eight registrations for the slogan DESIGNED WITH YOU IN MIND for various goods and services. Nonetheless, the determination in this case must be made on the available evidence at the time of examination. The Board is not privy to the record in these other cases and, in any event, is not bound by the actions of examining attorneys in allowing those marks to register.

In the case of those eight registrations, unlike the present case, we are left to guess what the evidentiary record was: whether the specimens displayed the term under a more prominent mark; whether the term was set in the midst of a description of goods and services; whether dictionary definitions, newspaper articles, or third-party Internet evidence demonstrating common use was adduced. In short,"We do not know what records were before the Examining Attorneys in other cases. Thus, there is little persuasive value in the third-party registrations." In re Best Software Inc., 58 USPQ2d 1314, 1316 (TTAB 2001).

Here, the examining attorney's evidence "demonstrates that businesses and consumers are generally accustomed to encountering the subject phrase, and that they would not perceive it as a source indicator but rather as a common informational message."

And so the Board affirmed the refusal

Read comments and post your comment here.

TTABlog comment: Consistency is the hobgoblin of small minds.

Text Copyright John L. Welch 2017.


At 3:38 PM, Anonymous Anonymous said...

In that case there are a lot of really big minds in the PTO!

At 4:13 PM, Blogger RT said...

Query whether this analysis (the examining attorney doesn't have to have the best evidence possible) can survive the strict scrutiny or even intermediate scrutiny of Brunetti.

At 4:22 PM, Anonymous Bill Finkelstein said...

Query: What if this been an intent-to-use application with no specimen to look at? If this was a stand-alone primary brand mark, could it be registrable, perhaps on the Supplemental Register?


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