Tuesday, February 02, 2021

"I LOVE YOU SO MUCH" Fails to Function as a Service Mark for Charitable Fundraising Services, Says TTAB

The Board upheld yet another failure-to-function refusal, this time affirming the USPTO's refusal to register I LOVE YOU SO MUCH, in the stylized form shown below, for "Charitable fundraising services by means of organizing and conducting special events." Based on the evidence of record, the Board concluded that "use of I LOVE YOU SO MUCH is so widespread that it is incapable of functioning as a service mark." In re Bunkhouse Management, LLC, Serial No. 87539883 (January 29, 2021) [not precedential] (Opinion by Judge Albert Zervas].

Examining Attorney Robert N. Guliano submitted numerous third-party website pages that include the phrase “I love you so much” used in messages concerning charitable donations, as well examples of use of the phrase in song titles, book titles, clothing, and messages of various sorts.  Applicant Bunkhouse Management provided seven form declarations asserting that the declarant recognizes the phrase as “an indicator of the source of coffee, food, café services and other goods or services.” Bunkhouse also pointed to third-party registrations for I LOVE YOU and formative marks, and various other items of evidence regarding street art and informational slogans.

According to Applicant, the consumers who take their photos in front of the mural at Jo’s Coffee do so to “commemorate their visits to the hip Austin establishment where people enjoy great beverages and food, and [to] experience the culture of Austin’s special South Congress neighborhood.”

The Board observed that this case hinges on whether "potential purchasers of Applicant’s services, would perceive the term as identifying Applicant’s services and their source or origin."

“[W]idespread use of a term or phrase may be enough to render it incapable of functioning as a trademark, regardless of the type of message.” In re Texas With Love, 2020 USPQ2d 11290, at *7. Expressions in ubiquitous use are unlikely to be perceived as source identifiers. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016); In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Volvo Cars of N. Am., 46 USPQ2d at 1460-61.

Although Bunkhouse displays the phrase on its website and uses the TM symbol adjacent the proposed mark, that alone does not suffice to make it an indicator of source. "[T]he evidence reveals that I LOVE YOU SO MUCH. does not perform the desired service mark function and does not fall within the Act’s definition of a service mark because it would be perceived not as a mark, but as a widely-used expression of a sentiment."

The Board found Bunkhouse's evidence to be unpersuasive. "The declarations Applicant submitted are only seven in number, and there is no explanation of how Applicant obtained the declarations." Such form declarations "may not “actually reflect the views of the declarants” and are entitled to “little weight." Moreover all of the declarants reside in Dallas, Texas, and their relationship to Applicant are unknown: e.g., consumers, suppliers or contractors. And the declarations fail to refer to charitable fundraising services. 

The third-party registrations for I LOVE YOU and formative marks were not probative because there was no evidence regarding the extent or manner of use of the marks. In any case, each application must be considered on its own merits. Finally, the Board observed that the stylization of the proposed mark is common and ordinary and does not create a commercial impression different from the words alone.

Concluding that the phrase fails to function as a service mark under Sections 1, 2, 3, and 45 of the Trademark Act, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I think saying that the mark is "incapable of functioning" as a mark is better than saying it "fails to function." The latter phrase suggests that there is something the applicant could do, like submit a better specimen of use, to salvage the proposed mark. The former phrase makes it clear that the proposed mark is not salvageable due to the ubiquity of the subject phrase.

Text Copyright John L. Welch 2021.


At 2:14 PM, Anonymous Valerie said...

Agree with you that "incapable of functioning" would have been better terminology in this case.


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