Hell Freezes Over! TTAB Reverses Failure-to-Function Refusal of JUST ANOTHER DAY IN PARADISE

The Board reversed a failure-to-function refusal of JUST ANOTHER DAY IN PARADISE for a variety of items in nine classes, such as candles, flatware, lamps, and Christmas ornaments. The Board concluded that the record evidence failed to show that the proposed mark "is a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark." In re Rodeowave Entertainment, LLC, Serial No. 87801076 (November 13, 2020) [not precedential] (Opinion by Judge Christen M. English).

The Board observed that slogans that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used particular business or industry, are not registrable. "The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”

The question of whether JUST ANOTHER DAY IN PARADISE "is inherently capable of functioning as a mark for the identified goods depends on whether the relevant public, i.e. purchasers and potential purchasers of Applicant’s goods, would perceive the phrase as identifying Applicant’s goods and their source or origin." The subject application was filed on an intent-to-use basis, and there was no evidence of applicant’s use of the phrase. However, there was evidence of third-party use in media and on a range of home décor, household goods, and clothing items. (examples depicted above and below). "Prominent ornamental use of an applied-for-mark ... 'is probative in determining whether a term or phrase would be perceived in the marketplace as a trademark or as a widely used message.'"

The nature of the message conveyed by the proposed mark is also pertinent. Familiar, commonplace expressions and slogans "used to convey social, political, patriotic, religious, and laudatory concepts are more likely to be perceived as imparting information than signifying source." (E.g., ONCE A MARINE, ALWAYS A MARINE; THINK GREEN; DRIVE SAFELY; PROUDLY MADE IN USA; WATCH THAT CHILD).

The evidence here does not demonstrate that the applied-for-mark is used in everyday parlance or that it conveys a common social, political, patriotic, religious or other informational message. In most of the media examples of record, the applied-for-mark is primarily used as the title of creative works rather than for any apparent common informational message.

The examining attorney maintained that the mark does not convey any clear or specific message, but rather is subject to a number of different interpretations; for example, "taking pleasure in small things" or "getting away from one’s troubles." [I think it conveys a sarcastic message - ed.]. The Board concluded that this potential ambiguity "makes it less likely that consumers would perceive it as conveying a particular informational message and distinguishes it from the types of well-recognized and unequivocal expressions found to be incapable of serving as source identifiers."

Although widespread use may be enough to render a term or phrase incapable of functioning as a trademark, regardless of the type of message - for example, I ♥ DC, ONCE A MARINE, ALWAYS A MARINE, DRIVE SAFELY - the use of the proposed mark "is not sufficiently widespread such that we can find it inherently incapable of serving as a source identifier even though the record does not demonstrate that the applied-for-mark is a familiar expression with a generally understood meaning." [Does that last quotation make sense? - ed.].

And so the Board reversed the refusal.

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TTABlogger comment:What do you think? Seems like a commonplace, unregistrable slogan to me.

Text Copyright John L. Welch 2020.