Thursday, February 14, 2019

"OOPS! WRONG ANSWER" Fails to Function as a Mark for a Trivia Website, Says TTAB

[This blog post is a collaborative effort of yours truly and members of the IP CO-LAB Clinic at Northeastern University]. The Board affirmed a refusal to register the phrase OOPS! WRONG ANSWER, finding that it fails to function as a mark for trivia website services. The Board likewise affirmed the same refusal for CONGRATULATIONS! YOU ARE CORRECT! Applicant Trivia Today feebly argued that it uses the phrases "prominently appearing by themselves or in different font colors," unlike the third-party uses cited by the examining attorney, and that the USPTO has registered other OOPS and CONGRATULATIONS marks. In re Trivia Today, LLC, Serial Nos. 86760550 and 86745338 (February 8, 2019) [not precedential] (Opinion by Judge David K. Heasley).

To function as a service mark, a proposed mark must, by definition, “identify and distinguish the services of one person ... from the services of others and … indicate the source of the services, even if that source is unknown.” Lanham Act Section 45. "The critical inquiry in determining whether a designation functions as a service mark is how it would be perceived by the relevant public." In order to assess how consumers would perceive the phrases sought to be registered, the Board looks to the specimens of use and to the evidence of record showing the phrases as used.

Examining Attorney Lauren E. Burke maintained that the applied-for marks convey information "that a question has been answered correctly or incorrectly, but do not indicate the entity asking the question." She pointed to a number of uses of the same or similar phrases from third-party websites. Applicant Trivia Today pointed to its use of varying font colors, and to several third-party registrations for marks containing CONGRATULATIONS or OOPS (none of which were in the trivia field).

The Board, however, noted that applicant sought registration of the phrases in standard character form, not in any particular colors or font. As to the third-party registered marks:

None are similar to the subject applications, where the wording of the proposed marks, CONGRATULATIONS! YOU ARE CORRECT! and OOPS! WRONG ANSWER., functions as a part of the services, indicating whether one’s answers to a trivia guessing game are correct or incorrect.

The Board concluded that the applied-for marks are merely informational and fail to identify the source of the services.

They must accordingly remain in the public domain, available to all competitors. In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460 (TTAB 1998). As McCarthy puts it, “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights” in common phrases or slogans. 1 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 7:23 (5th ed. Nov. 2018 update).

And so the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment:  Interesting point about the phrases functioning as part of the services. Compare that with registered, arguably common phrases, like JUST DO IT, or the SMILE MORE mark discussed here.

Text Copyright John L. Welch et al. 2019.


At 12:50 PM, Blogger Unknown said...

Great co-lab with the IP CO-LAB. Looking forward to more.


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