Tuesday, February 19, 2019

In view of Applicant's 11 Existing Registrations, TTAB Reverses 4 Failure-to-Function Refusals of RANDOM ACTS OF KINDNESS

The Board reversed four failure-to-function refusals of the mark RANDOM ACTS OF KINDNESS, in the special form shown below, for goods and services relating to the promotion and encouragement of the "doing of good deeds for others." The examining attorney maintained that the subject phrase is "merely informational and constitutes a widely used common slogan" that does not indicate source. The Board, however, pointed to applicant's eleven existing registrations for the phrase or variations thereof, and found this departure from the USPTO's prior position to be inexplicable and unacceptable. In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 87245971, 87245973, and 87245975 (February 15, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The examining attorney relied upon excerpts from various websites encouraging people to perform good deeds, charitable activities, and acts of compassion, as well as on articles regarding altruism. Applicant argued that its previously registered marks, all on the Principal Register, preclude a finding that the applied-for marks fail to function as source indicators. In response, the examining attorney cited In re Nett Designs, Inc.,  57 USPQ2d 1564, 1566 (Fed. Cir. 2001), for the principle that each case must be decided on its own facts, and that the Board is not bound by prior decisions of examining attorneys in other cases.

The Board observed that it was faced with a "unique situation." Each of Applicant’s eleven prior registrations issued on the Principal Register and is entitled to a presumption of validity under Section 7(b). The marks of the prior registrations either constitute or incorporate the same phrase at issue. Six of the registrations are more than five years old, and the remaining five issued from applications filed on the same day as the four applications here at issue. None include a disclaimer of the phrase.

The Examining Attorney’s refusals thus constitute a departure from the Office’s prior position. * * * There is no evidence, or even argument, to suggest that the alleged incapability of this phrase to identify source could not have been discerned at the time any of the prior registrations were examined. The same types of evidence the Examining Attorney now relies on was previously available. Furthermore, the Office offers no reason for its inconsistent treatment of the five registrations which recently issued that were filed on the same day as the four applications before us. In light of these unusual circumstances, we are compelled to reverse the Examining Attorney’s refusals. To find otherwise would result in inconsistent examination.

And so the Board reversed the refusals.

Read comments and post your comment here.

TTABlog comment: Should this decision be precedential?

Text Copyright John L. Welch 2019.


At 9:07 AM, Anonymous Erik Pelton said...

Yes, precedential would be helpful -- consistency is a very important consideration for applicants and potential applicants when review the USPTO register for similarly situated marks.

At 11:16 AM, Anonymous Alex B. said...

I was thinking it should be precedential and anytime the TTAB upholds consistency in examination it should be precedential because it rarely, if ever, does that.

At 12:01 PM, Anonymous Anonymous said...

I love that this opinion dropped just 2 days before the National Random Acts of Kindness Day!

At 2:55 PM, Anonymous Miriam Richter, Ft. Lauderdale FL said...

I agree - it should be precedential. However, I had no idea it was a trademark and still have trouble seeing it as such. It makes an interesting question for genericide. Obviously they have been cognizant of their rights but how are they on enforcement? It's a term that's been around for years and is synonymous (in my mind) with "pay it forward". STOP THE PRESSES - Never mind - I just checked and that is registered as well! This is turning into a slippery slope!

At 5:24 PM, Anonymous Mitchell Stabbe said...

Yes, this should be precedential, but, in future cases, the TTAB might well says that this case is limited to consistency in treatment of a particular mark, and that it is inapplicable to claims based on inconsistency with prior practices.

At 8:32 PM, Blogger BrandGeek said...

For an agency with a Consistency Initiative, the USPTO sure has a hard time with the concept and it sure would help for this to be precedential. These facts (prior Principal registrations examined when the same evidence was available as is now) easily could be repeated.


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