Tuesday, April 12, 2022

"DESIGNED, SOURCED AND BUILT IN THE USA" Fails to Function as a Trademark for Industrial Chemicals, Says TTAB

In the latest in a stream of failure-to-function affirmances, the Board upheld a refusal to register the proposed mark DESIGNED, SOURCED AND BUILT IN THE USA for industrial chemicals, hand-sanitizing preparations, face mask, and sneeze guards, finding the phrase to be merely informational. Applicant NuGeneration asserted the Examining Attorney Andrew Crowder-Schaefer did not provide sufficient evidence of "uses of the exact wording" for the same or similar goods, and further argued that the phrase is incongruous when applied to chemicals and sanitizers. The Board was unimpressed. In re NuGeneration Technologies, LLC, Serial Nos. 88852858 and 88866690 (April 7, 2022) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The evidence showed use of "Designed in America," "Sourced in America," and "Built in America" separately for hand sanitizers, masks, and germ/face shields. It also included use of the entire phrase "Designed, Sourced and Built in the USA" [with and without the Oxford comma] for goods unrelated to the identified goods. [see example above]. NuGeneration charged that the Examining Attorney had mutilated its mark, and that the evidence "does not demonstrate that Appellant's mark is used in everyday parlance' or that it is 'a familiar everyday expression or slogan,' and fails to show the phrase is 'widely used in the marketplace' in relation to similar goods."

The Board, however, found that "the website evidence of the separate uses of the phrases "designed in the USA," "sourced in the USA," and "built in the USA" show how consumers are exposed to the informational terms that compose Applicant’s mark as a whole." As to the lack of evidence of use of the entire phrase "designed, sourced and built in the USA" in connection with the identified goods, "the Examining Attorney’s evidence shows that all types of businesses have adopted this slogan." And as to the argument regarding failure to show "widespread use," the Board observed that "[a]lthough the volume of evidence in this case is not as large as in other Board cases, there is no specific rule as to the exact amount or type of evidence necessary to prove informational use."

Applicant also argues that the “designed, and built in the USA” portion of its mark is incongruous in connection with chemical goods and hand sanitizing goods. The evidence reflects that “designed in the USA” has been used in connection with hand sanitizers to reference their formulation, and chemical compounds could be similarly designed. And while industrial chemicals and sanitizers may not be “built” in the sense of putting solid materials together, they are manufactured by combining their constituent elements, which is conveyed by the term “built.” Therefore, we find no incongruity in the phrase as a whole as to these particular goods.

Finally, the Board rejected NuGeneration's argument that the refusal was "premature" because the subject application is based on intent-to-use under Section 1(b). The Board, however, agreed with the Examining Attorney that a refusal may be issued "if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark."

Applicant’s proposed mark DESIGNED, SOURCED, AND BUILT IN THE USA, in addition to conveying information to the consumer to support American made goods and businesses, taps into the American consumer’s desire to purchase products of higher quality and better design, that are durable and sourced locally, ensuring safety & quality at every step of the supply chain.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I expected the Board to say something to the effect that just because one is the first and only user of a proposed mark doesn't automatically make it a source indicator.

Text Copyright John L. Welch 2022.


At 8:25 PM, Anonymous Anonymous said...

Decision is right about the mark fails to function as a trademark, but the reasons are opening a pandora's box. The argument where the mark is separated into "Designed in America," "Sourced in America," and "Built in America" goes too far. I hope Federal Circuit comes out with rule where the exact words or substantially similar words in ONE phrase must be used, and anything less is not adequate evidence. Whatever happened to the rule where the mark must be considered in its entirety.


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