Tuesday, October 15, 2019

TTAB Affirms Failure-to-Function Refusal of Informational Phrase for Bumper Stickers

Finding that the purported word+design mark shown below is "merely an ornamental or informational feature" of Applicant Steven Schalk's "bumper stickers," the Board affirmed a failure-to-function refusal under Sections 1, 2, and 45 of the Trademark Act. In re Schalk, Serial No. 86183499 (October 10, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Once again, the question for the Board was whether the public would perceive the purported mark as a source indicator for the identified goods. In making that determination, the Board may consider the “size, location, dominance, and significance of the alleged mark." The claimed mark comprises the entirety of the identified goods: bumper stickers.

Citing prior decisions involving the slogans "No More RINOs! for bumper stickers, "THINK GREEN" for weather stripping and paper products, and "WATCH THAT CHILD" used on bumper stickers in connection with construction materials, the Board found that the alleged mark "essentially conveys a message or opinion that consumers are likely to perceive as informational rather than source identifying."

The Board recognized that an ornamental design" may, in some cases, inform the purchasing public of 'the source of the [goods], not the source of the manufacture, but the secondary source.'"

In the context of an ornamentation refusal, "'secondary source' simply means that the use of the design or words would be perceived by the consumer as an indicator of source due to the applicant's prior use or registration of the mark for other goods or services (not the applied-for goods)." In re Lululemon Athletica Canada, 105 USPQ2d at 1690 n. 4.

However, Applicant Schalk offered no evidence of prior use or registration of his purported mark that could indicate a secondary source.

And so the Board concluded:

Applicant’s applied-for mark is informational rather than source-identifying, and since Applicant has not submitted any evidence of acquired distinctiveness or secondary source, we affirm the refusal to register under Sections 1, 2, and 45 on the ground that the applied-for mark as used on the specimen of record is merely an ornamental or informational feature of the goods and does not function as a trademark to indicate the source of Applicant’s goods and to identify and distinguish them from others.

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TTABlog comment: In addition, Examining Attorney Alison F. Pollack had issued final refusals under Section 2(b), which refusal was withdrawn on appeal, and under the disparagement provision of Section 2(a). The appeal was suspended pending the Supreme Court's decision in Matal v. Tam, which then rendered the Section 2(a) disparagement refusal moot.

Text Copyright John L. Welch 2019.


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