TTABlog Test: How Did These Three Failure-to-Function Appeals Turn Out?
It seems that failure-to-function refusals are increasing in frequency. Just in the last few days,the Board issued decisions in three such cases. Are trademark applicant's overreaching? Have people come to think that if they are first to file they will "own" the phrase or term? Anyway, let's see how you function as a TTAB judge. [Answers in first comment].
In re Nancy D. Greene, Serial No. 87830154 (November 18, 2020) [not precedential] (Opinion by Judge Thomas Shaw, dissent by Judge Cindy B. Greenbaum). [Refusal to register the term LEGAL LANDMINES on the Supplemental Register, on the ground of failure to function as a service mark for business coaching and educational services. The Examining Attorney argued that the phrase is "“a commonplace term, message, or expression widely used by a variety of sources in the applicant’s field that merely conveys an ordinary, familiar, well-recognized concept or sentiment, namely, that the provided coaching and educational services are for assisting businesses in avoiding concealed yet incipient crises relating to the law.”]
In re Donald E. Moriarty, Serial No. 86367823 (November 23, 2020) [not precedential] (Opinion by Judge Thomas Shaw). [Failure-to-function refusal of WORST MOVIE EVER! for "parody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films." The Examining Attorney maintained that the term "is merely a commonplace slogan used by a variety of sources and merely conveys an ordinary, familiar or well recognized concept or sentiment, that is, '[t]he applied-for mark conveys the ordinary and well recognized concept that the movie in question is the most wanting in quality, value or condition of all time.'"]
In re PIF Group LLC, Serial No. 88084519 (November 23, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Refusal to register the proposed mark SHE KNEW SHE COULD on the ground that the phrase fails to function as a trademark for a various goods in classes 14, 16, 18, 21, 25, and 28, including jewelry, blank journals, beach bags, drinking glasses, clothing, and playing cards. The Examining Attorney asserted that use of SHE KNEW SHE COULD "convey[s] the ordinary, familiar, well-recognized sentiment of female empowerment or affirmation [and] is consistent with the plain meaning of the wording that comprises the expression. … [A] female is aware that she is able."].
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TTABlogger comment: See any WYHA?s here?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 11/25/2020
5 comments
5 Comments:
All three were affirmed
There is a big difference between something being a common phrase in widespread use- clearly something belonging to the public at large that no one should be able to claim a monopoly on, and a common sentiment being expressed in a novel way, which can function to designate the source of goods. Call to mond the enormous success of the LIFE IS GOOD trademark. Common sentiment seems far too broad a ground for refusal. The PTO should have to show examples of the proposed mark actually being found in the common lexicon.
I agree that "[t]he PTO should have to show examples of the proposed mark actually being found in the common lexicon."
I think that the increase in failure-to-function rejections has more to do with the PTO scrutinizing applications more carefully across the board, rather than any change in applicants' filing behavior.
We are seeing a higher level of scrutiny for specimens, descriptiveness in general, acquired distinctiveness evidence, genericness, and surnames as well. Compared to recent, it is almost surprising to see how lax the PTO was with all of these issues even just five years ago. I'm not saying it is wrong or right, but the examining attorneys seem to be better trained and on the lookout for some issues that previously did not get flagged as heavily.
I think some of these have other more appropriate refusals like LEGAL LANDMINES is not used as a mark and the WORST MOVIE mark doesn't appear to be used on a recognized service.
Evaluating the extent to which a mark functions as a trademark purely in the abstract without reference to how applicant is actually a mark seems logically and legally problematic. Nor does evidence of non-trademark use by others seem sufficient to dispose of the question. The heart of the issue seems to be whether the public is likely to perceive the words as a communicative message/sentiment vs. a source-identifier. The nature of goods would seem highly probative -- i.e., does the inherent nature of the good lend itself to serving as a vehicle for conveying a message/sentiment. It is not a coincidence that so many of the key failure-to-function cases prior to this new wave involved goods like bumper stickers and t-shirts.
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