Friday, December 04, 2020

Precedential No. 42: TTAB Affirms Bifusal (TM) of GOD BLESS THE USA for Pillows: Failure-to-Function and Mutilation

Given the recent run of failure-to-function rulings, it is hardly surprising that the Board affirmed a refusal to register the phrase GOD BLESS THE USA for “accent pillows; decorative centerpieces of wood”  and for “decorative wall hangings, not of textile” on that same ground. The Board found that the phrase is a common expression of patriotism, affection, or affiliation with the United States of America that will not be perceived as a source indicator. The Board also affirmed a refusal to enter Applicant's amendment of the mark to "THE LEE GREENWOOD COLLECTION GOD BLESS THE USA" because that amendment would constitute a material alteration of the proposed mark. In re Lee Greenwood, 2020 USPQ2d 11439 (TTAB 2020) [precedential] (Opinion by Judge David K.Heasley).

Failure-to-Function: The critical inquiry in determining whether a proposed mark functions as a trademark is how it would be perceived by the relevant public. In re Vox Populi Registry Ltd., 2020 USPQ2d 11289, *4 (TTAB 2020). Examining Attorney Barbara A. Gaynor maintained that the proposed mark is "a common patriotic message, analogous to and synonymous with 'God Bless America.'" Evidence from more than three dozen third-party websites established that this phrase is commonly used on a vast array of goods. 

The Board found this case "reminiscent" of D.C. One Wholesaler v. Chien. There, the phrase “I ♥ DC” was commonly available on a range of goods, from apparel and aprons to commuter cups and keychains. 120 USPQ2d at 1713-14. The Board found that the “widespread ornamental use of the phrase by third parties ‘is part of the environment in which the [proposed mark] is perceived by the public and . . . may influence how the [proposed mark] is perceived.’” Id. at 1716 (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013).

Similarly, the record here indicates that "the phrase GOD BLESS THE USA is displayed, not as a source indicator, but as an expression of patriotism, affection, or affiliation with the United States of America."

Applicant Greenwood, a country music artist, insisted that “God Bless the USA” would be commonly recognized as his signature song: "In view of 'Mr. Greenwood’s talent and fame' and 'the notoriety of his iconic song ‘God Bless the USA’ and his close association therewith…,” Greenwood maintained that the public will regard the proposed mark as his trademark.


The Board was unmoved. It pointed out that there are no limitations to the channels of trade or classes of consumers for the goods in Greenwood's application, and so the relevant consumers include members of the general public who may or may not be country music fans. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017), cited in In re Mayweather Promotions, 2020 USPQ2d 11298 at *3. In any case, even consumers familiar with the song and with Greenwood may not associate the household items identified in the application with him or his song, when so many third parties offer household items dispalying the same phrase.

The Board concluded that the proposed mark GOD BLESS THE USA is "devoid of source-identifying significance and therefore fails to function as a trademark." In re Hulting, 107 USPQ2d at 1181.

 Mutilation: Trademark Rule 2.72 provides (emphasis by the Board):

(a) In an application based on use in commerce under section 1(a) of the Act, the applicant may amend the description or drawing of the mark only if:

(2) The proposed amendment does not materially alter the mark. The Office will determine whether a proposed amendment materially alters a mark by comparing the proposed amendment with the description or drawing of the mark filed with the original application.  

Greenwood pointed to his ownership of a registration for the mark THE LEE GREENWOOD COLLECTION for the same goods as those involved here, and maintained that, according to the TMEP, he is allowed to amend the proposed mark to include his previously registered mark because the TMEP states "An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted." TMEP § 807.14(b). [The TMEP is not the law - ed.]

The Board reviewed various precedents regarding this "mutilation" issue and concluded that, under current law, "the key comparison is between the proposed amendment and the drawing of the mark in the original application." The crucial question is whether the old and new forms of the mark create "essentially the same commercial impression." Visa, 220 USPQ2d at 743-44; In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012).

This is a question of fact, to be evaluated from the viewpoint of an ordinary consumer. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoted in Hana Fin., Inc. v. Hana Bank, 574 U.S. 418, 113 USPQ2d 1365, 1367 (2015), cited in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1133 (Fed. Cir. 2015). These consumers, unfamiliar with registrations on the Principal Register, may see an applicant’s addition of his previously registered matter as a significant change from the mark as originally filed. Indeed, an applicant may own scores of previously registered marks, any one of which could be appended to the root mark as originally filed. The mark as originally filed could thereby serve as a placeholder for later amendments bearing “little resemblance to the mark as originally filed."

Consequently, the Board held that "previous registration of matter added in a proposed amendment is not an exception to the rule against material alteration; it is a factor to be considered in determining whether the alteration is material."

The Board agreed with the Examining Attorney the addition of THE LEE GREENWOOD COLLECTION to GOD BLESS THE USA would materially alter the original mark,

The additional four words would appear prominently as the first part of Applicant’s proposed mark, the part that “is most likely to be impressed upon the mind of a purchaser and remembered.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1185 (TTAB 2018) (quoting Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)). And the additional seven syllables would create a noticeably different pronunciation. *** Adding Applicant’s house mark would, moreover, make a substantial difference in connotation and commercial impression.

Therefore the Board found that Applicant Greenwood’s proposed amendment to his original applied-for mark would constitute a material alteration of the original mark is impermissible under Trademark Rule 2.72(a)(2).

Read comments and post your comment here.

TTABlogger comment: Would you have appealed? By the way, on the next day, in a nonprecedential decision (here), the Board affirmed identical refusals of Greenwood's application to register PROUD TO BE AN AMERICAN for the same goods.

Text Copyright John L. Welch 2020.


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