Thursday, January 17, 2019

Precedential No. 1: Wal-Mart's "INVESTING IN AMERICAN JOBS" Fails to Function as a Service Mark, Says TTAB

The Board affirmed a refusal to register the purported mark INVESTING IN AMERICAN JOBS for "promoting public awareness for goods made or assembled by American workers" and for various retail and online store services, finding that the phrase fails to function as a service mark. The Board concluded that, as used by Wal-Mart, the phrase "would be perceived by customers as a merely informational phrase," and not as an indicator of source. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148 (TTAB 2019) [precedential] (Opinion by Judge Linda A. Kuczma).

The Board observed that the CAFC and its predecessor, the CCPA, as well as other federal courts, "draw a distinction between words used to 'identify and distinguish' source, and words used in their ordinarily-understood meaning to convey information other than source-identification." For example, DRIVE SAFELY, THINK GREEN, and YOU HAVE MAIL were deemed unregistrable as trademarks.

A critical question is "whether the phrase sought to be registered would be perceived as a mark identifying the source of the services, or as something else." See, e.g., D.C. One Wholesaler v. Chien, 120 USPQ2d at 1713. In making this determination, the Board reviews the specimens and other evidence that shows how the purported mark is used in the marketplace.

Looking first to Wal-Mart's own use of the phrase, its specimen of use (displayed above) appears on a shelf-talker in close proximity to products that are made by American workers. The phrase also appears on a web page with that phrase as the title, the web page stating "We believe we can create more American jobs by supporting more American manufacturing."

The slogan INVESTING IN AMERICAN JOBS is like other statements that would ordinarily be used in business or industry, or by certain segments of the public generally, to convey support for American-made goods, and thus would not be recognized as indicating source and are not registrable. (citing cases).

The Board therefore found that the applied-for mark would be perceived by consumers as merely an informational statement that Wal-Mart is selling certain goods that are made or assembled in America, and it would not be perceived as a service mark.

Although the Board deemed the evidence of Wal-Mart's usage to be sufficient to establish that the phrase does not function as a mark, the Board also considered use of the phrase by third parties. Examining Attorney Barbara Brown submitted many examples of third-party usage showing that “investing in American jobs” is commonly used in several industries to convey the same general idea (supporting American jobs) as does Wal-Mart. This evidence further demonstrated the public perception of the phrase as merely informational.

Wal-Mart pointed to search engine results, advertising expenditures of more than $10 million, attendance by 5,700 people at promotional events featuring the slogan, and more than 300,000 visits at its website, as evidence that the phrase is recognized as a mark. Wal-Mart also criticized the USPTO's evidence as failing to show how many visits the third-party websites offered in evidence had received. The Board was unimpressed.

[T]here is no requirement that the Examining Attorney establish that a particular online source or website “has significant web traffic” to establish its competence, just as with print articles, the Examining Attorney need not establish the circulation of the magazine or newspaper or that the cited article has actually been read. *** Even websites that are not frequently visited still demonstrate how the authors use the term or phrase and how that term or phase will be perceived by the readers. 

The Board found that the third-party evidence "shows common usage of the phrase 'investing in American jobs' by commercial businesses in various industries, as well as in media articles and blogs, to convey the goal or aim of investing in U.S. business to promote employment opportunities in America."

None of Wal-Mart's evidence demonstrated that the applied-for mark serves as a source indicator. The number of searches and the ranking in search results reveal nothing about the impression that the phrase makes on consumers. The evidence of promotional expenditures, attendance at events, and website traffic statistics "fares no better."

In sum, the USPTO's third-party evidence supported the Board's conclusion that consumers will not perceive the applied-for mark as an indicator of a single source for the identified services. "Rather, consumers will perceive the words merely as conveying the common, informational message that Applicant, like others, promotes American-made goods by investing in American jobs."

The Board therefore affirmed the refusal to register under Sections 1, 2, 3, and 45 of the Lanham Act.

Read comments and post your comment here.

TTABlog comment: I wonder what percentage of the goods sold at Wal-Mart are made in America?

Text Copyright John L. Welch 2019.


At 8:27 AM, Anonymous Anonymous said...

One suspects that the percentage of the goods sold at Wal-Mart that are made in America is much much smaller than the number of Wal-Mart employees on public assistance...

At 9:27 AM, Anonymous Joe Dreitler said...

You really don’t wonder what % of Wal-Mart goods are Made in America, do you? Tiny. Ihad Oppositions against Wal-Mart in the late 1980’s when they filed for “ALWAYS Made in America”. At the time, everything was pretty much made in America. In 1994 Wal-Mart changed dramatically its business model and that was the end of that slogan

At 2:05 PM, Anonymous NJ Keith said...

This ground for refusal may get more use if and when all the "N" word slogans get past the First Amendment obstacles.

At 4:11 AM, Anonymous Anonymous said...

If they truly did champion this campaign/US jobs, good for Walmart, but this smells like an opportunistic attempt to cash in on a nationalist wave, and putting aside the legal/TM side of things, it seems Walmart got what they deserved here.

Although the sources are a bit dated (e.g.,, a quick search points to 70% to 80% of goods sold at Walmart being made in China.

Also, in the I want my cake and eat it too department: from 2017: "A Reuters Ipsos poll released on Thursday found 70 percent of Americans think it is important to buy U.S.-made products but 37 percent said they wouldn’t pay more for U.S.-made goods."

At 1:01 PM, Anonymous Anonymous said...

China-Mart has done so much to destroy the American economy. Although many major companies have worked hard to NOT make ANYTHING in America, when something is made in America, China-mart forces the company to have it made in China. So the Waltons got rich selling out their country. Read the book "Walmart Effect." It sounds a bit extreme perhaps, but why weren't/'aren't the executives who have done so much to rid our country of its economic/power base being tried for treason? Many "little" people have been jailed for passing a few drawings or notes to enemy states. "Our" corporations have handed entire industries to the Chinese. In the name of short-term profits, we our short-sighted corporate "leaders" have transferred so much tech and know-how for so many years that it will take us equally long, if ever, to regain lost capability. WW III was fought. We lost...and are just now seeing it.


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