Tuesday, February 22, 2022

"GET ORDAINED" Fails to Function as a Source Indicator for Ordination-Related Services, Says TTAB

The Board sustained an opposition to registration of the proposed mark GET ORDAINED for on-line retail store services featuring clothing, stationery, publications in the fields of religion, and various other products, conducting religious ceremonies, ordaining ministers, and providing religious information, finding that the phrase is so commonly used that consumers will not perceive it as a source indicator pointing uniquely to the applicant. Alternatively, the Board found the phrase to be merely descriptive and lacking secondary meaning. American Marriage Ministries v. Universal Life Church Monastery Storehouse, Opposition No. 91237315 (February 17, 2022) [not precedential] (Opinion by Judge Christen M. English).

Failure to Function: The Board observed that "[s]logans and other terms and phrases that are ordinarily used in a particular trade or industry will be understood as conveying the ordinary concept normally associated with them, rather than serving any source-indicating function. In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); see also In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1149-50 (TTAB 2019)."

The record included numerous examples of third parties using "get ordained" to convey its ordinary meaning. Applicant acknowledged in an interrogatory response that it is "generally aware that third parties may use the term 'get ordained' when discussing the act of becoming a minister or wedding officiant." Both parties use "get ordained to convey its ordinary meaning."

Applicant’s own use of “Get Ordained” to convey the ordinarily-understood meaning of the words, i.e. “become ordained” or “become a minister,” is strong evidence that Applicant’s consumers will perceive “get ordained” not as a service mark but rather for the commonly understood meaning of the words.

Applicant's use of the "TM" symbol does not transform the phrase into a trademark. See, e.g., In re Aerospace Optics, 78 USPQ2d at 1864. Its intent that the phrase function as a service mark is irrelevant. In re Hulting, 107 USPQ2d 1175, 1180 (TTAB 2013).

The Board concluded that "get ordained" fails to function as a service mark for applicant's services, and so it sustained the opposition.

Because “get ordained” is so commonly used in the field of ministerial ordination, including by Applicant, for its ordinary meaning, i.e., “become ordained” or “become a minister,” consumers will not perceive the phrase as a source indicator pointing uniquely to Applicant. Rather, consumers will perceive the words as conveying their ordinary meaning.

Mere Descriptiveness: The Board found that consumers use applicant's ecclesiastical services so they can "get ordained." Applicant's on-line store services feature products that consumers need to prepare to "get ordained" or once they "get ordained." Thus, "get ordained" describes a purpose, use, or feature of applicant's services and is highly descriptive of them.

With respect to acquired distinctiveness, in view of the highly descriptive nature of the proposed mark, applicant's burden of proof is "commensurately high." Applicant did not provide direct evidence of acquired distinctiveness, such as survey evidence or consumer declarations, but instead relied on circumstantial evidence regarding its length of use, advertising expenditures, sales, and number of users.

The Board found applicant's ten years of use to be "somewhat lengthy" but "not particularly persuasive" on this record. Its advertising expenditures of $1M were "modest" and its sales revenues and number of consumers were "not so impressive as to elevate Applicant's highly descriptive designation to the status of a distinctive mark" in the absence of market share and other contextual information.

Applicant argued that third-party uses of "get ordained" were not uses as a trademark, but the Board refused to bless that argument: "Third-party use need not be of a trademark nature to interfere with a claim of 'substantially exclusive' use under Trademark Act Section 2(f)."

And so, the Board concluded that GET ORDAINED is merely descriptive of applicant's services, and lacks acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment: WYHA? Would you have applied for registration?

Text Copyright John L. Welch 2022.


At 10:25 AM, Anonymous Anonymous said...

As to your question "would you have applied," widespread public misunderstanding that a registration is required to "trademark" your, well, trademark, sometimes leads to the filing of unnecessary applications, particularly by very small businesses and individuals. Sometimes applying will "wake a sleeping dog" with a similar mark. Sometimes you'll get an office action or TTAB decision saying your mark is generic or merely descriptive, and that gives ammo to anyone you might later send a C&D to. My radical thought is, maybe think about why your business needs a registration and the relevant legal landscape. My second radical thought (especially where there are one or more identifiable potential sleeping dogs) is, maybe think about a state registration to grab a toehold and bolster a potential laches defense for a rainy day. And don't get me started on people who think you can "trademark," i.e., register and thereby get exclusive use of, a widely-used or popular phrase.


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