BORN IN THE USA Fails to Function as a Trademark for Clothing, Says TTAB
The Board affirmed a refusal to register BORN IN THE USA for "bottoms as clothing; footwear; headwear; tops as clothing," finding that the phrase fails to function as a trademark. The evidence of record showed that "BORN IN THE USA is a widely used informational message that goods originate from the United States." In re Born in the USA LLC, Serial No. 87867549 (August 26, 2020) [not precedential] (Opinion by Judge Cynthia C. Lynch).
The question for the Board was whether the proposed mark functions as a mark, based on whether the relevant public perceives the phrase as a source indicator. Matter that is merely informational is not source-indicative.
Examining Attorney Robert Guliano maintained that the phrase is a commonplace message or expression used widely, including in the clothing field, "to convey an informational patriotic sentiment of origin in the United States." He submitted numerous examples of such usage, including "Perry Ellis Denim: Born in the USA" and "Born in the USA: An Inside Look at Klein Plastics."
The Board noted that other, similar message have been deemed informational and thus unregistrable: e.g., INVESTING IN AMERICAN JOBS for retail store services and PROUDLY MADE IN THE USA for electric shavers.
Applicant argued that its specimens of use (see picture above) "unequivocally demonstrate trademark use of the mark in on [sic] the inside collar of Applicant's goods and upon the product packaging." The Board was unmoved: "Given the nature of the wording and its widespread use in many contexts including in connection with clothing, Applicant's manner of use of the proposed mark on the specimen does not negate its informational nature."
The Board pointed out that, on the shirt, the proposed mark appears next to the phrase "Made IN USA," in close proximity to other informational matter, reinforcing its informational significance.
Applicant pointed to seven third-party registrations for marks consisting of or containing the phrase BORN IN THE USA, but not for clothing. [But a number of the uses cited by the Examining Attorney were not for clothing either - ed.]. The Board was unimpressed, observing that each application must be considered on its own record, and further that the record here did not include examples of use of these third-party marks, whereas applicant's specimens of use show the proposed mark in close proximity to other matter that reinforced its informational nature.
And so the Board affirmed the refusal.
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TTABlogger comment: Didn't Bruce Springsteen have a song, Born to Run in the USA?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 8/28/2020
2 comments
2 Comments:
It looks like it's functioning as a trademark to me. Maybe the Board does not want the Applicant trading off Springsteen fame?
> Maybe the Board does not want the Applicant trading off Springsteen fame?
Except that would be a 2(a) false suggestion of connection rejection... which I actually would have liked to see.
(The Margaritaville case is often cited for the proposition that a reference to a song is a false suggestion of connection, but the case is a lot more limited than people give it credit for: The Board didn't find in favor of Jimmy Buffet on that basis; he simply survived a motion for summary judgement, with the Board holding that it's possible he could prove his case. Then they settled, so we never actually got an actual decision on what would be needed to prove that claim.)
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