Thursday, January 31, 2019

Precedential No. 2: #MAGICNUMBER108 Fails to Function as a Trademark for Shirts, Says TTAB

Finding that the term #MAGICNUMBER108 fails to function as a trademark for shirts, the TTAB affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. The Board concluded that the term conveys an informational message referring to the Chicago Cubs winning the World Series in 2016 after a 108-year drought, and does not serve as a source identifier. In re DePorter, 129 USPQ2d 1298 (TTAB 2019) [precedential] (Opinion by Judge Linda A. Kuczma).

Harry Caray's image on applicant's specimen t-shirt

Examining Attorney Kim Teresa Moninghoff submitted evidence showing that numerous third parties have used #MAGICNUMBER108 as part of messages posted on social media during and after the 2016 World Series, expressing support for the Cubbies. There was no dispute that applicant - who may be the World's leading expert in Cubs numerology - was the first to use the term.

The Board found that the USPTO's evidence shows "wide use of the proposed mark in a non-trademark manner to consistently convey information about the Chicago Cubs' World Series appearance and win after a 108-year drought." There is no requirement that the evidence show the term used for goods in commerce.

This evidence is competent to suggest that upon encountering Applicant's "mark," prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant's goods."

The presence of the hash mark in applicant's proposed mark reinforced the Board's finding.

In the social media context, a hashtag "is a word or phrase preceded by a hash mark (#), used within a message to identify a keyword or topic of interest and facilitate a search for it." Evidence in the record establishes that Applicant's proposed mark #MAGICNUMBER108 has been used extensively as a hashtag to identify the Chicago Cubs’ World Series appearance and win.

The Board observed that a hashtag, when used as part of an online social media search term, generally serves no source-identifying function. It "merely facilitate[s] categorization and searching within online social media." TMEP Section 1202.18. "Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable term typically will not render the resulting composite term registrable."

Applicant DePorter argued that his proposed mark has never been used in everyday speech, and instead is arbitrary and fanciful. The Board pointed out, however, that even if true, that does not necessarily mean the public perceives the term as a source indicator. Here, the evidence shows that the proposed mark is a "widely-used message to convey information about the Chicago Cubs baseball team."

The Board concluded that "#MAGICNUMBER108 is perceived as part of an online social media trend related to the phrase 'magic number 108,' expressing affiliation with the Chicago Cubs baseball team and their 2016 World Series win after 108 years rather than as an identification of source for the goods identified in the application."

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: Do any people beyond the North Side of Chicago know (or care) what this term is supposed to refer to? If the term is informational to the teeny-weeny percentage of Americans who are Cub fans, is that enough to invoke the failure-to-function bar?

Text Copyright John L. Welch 2019.


At 10:00 AM, Anonymous R. Jacobs-Meadway said...

Since the shirt would be of interest only to Cubs fans and only because of the message conveyed, the fact that the message would resonate only with that audience should not preclude a finding that the slogan fails to function as a mark.
Certainly nothing in the display of the mark suggests source indicating significance.
It would be the same with a shirt with RUN 215 across the front for races run in Philadelphia area (215 area code).

At 11:45 AM, Blogger New Paltzer said...

I'm a baseball fan, but not particularly a Cubs fan. To me, and probably most fans with any interest in baseball statistics, "magic number" is a term of the art. Near the end of a baseball season, the team in first place has a magic number over the other teams in the league or division. So if the Cubs lead the division, and the Mets are 2-1/2 games behind, the Cubs magic number might be 5 (depending on each team's W-L record and games remaining in the season). In that scenario, any combination of Mets losses + Cubs wins of 5 or more, ensures a first place finish for the Cubbies.
But in that context, a magic number of 108 doesn't make much much sense; there is no good reason to even calculate the magic number before September.
So getting back to the trademark issue, if I saw "#magicnumber108", I'd assume they intended "magic number 108". The "#" and the lack of spaces are just an artistic choice, and have no deeper significance. Okay, so I see the "magic number 108" and I realize they are misusing the expression. With the Harry Carrie charactature, I'd MIGHT make a link to the Cubs, then I MIGHT remember that prior to 2016, the Cubs last World Series win was in 1908. All of that brings up this truly profound question: Mordecai Brown had eight fingers, so why did they call him "three finger" Brown?

At 6:17 AM, Blogger John L. Welch said...

How small can the audience be that "gets" the message? Suppose it's only the people in your high school graduating class?

At 3:40 PM, Anonymous Mitchell Stabbe said...

Shouldn't this application have rejected on the ground that the "mark" is purely ornamental?

At 1:12 PM, Blogger Larry Robins said...

As a Chicagoan, Judge Kuczma was particularly qualified to decide this case!

At 1:33 PM, Blogger John L. Welch said...

As a native Chicagoan and a life-long White Sox fan, I enjoyed another Cubs' defeat.


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