We haven't had a failure-to-function case in a while. Here, the Board affirmed a refusal to register the proposed mark BUILT BY GOD for various clothing items, finding that the phrase fails to function as a source indicator for the identified goods. Applicant Kollins Ezekh claimed that there was little third-party use of the mark, and further that the phrase is "associated with the acclaimed fitness services offered by the Applicant on www.builtbygod.tv." Despite applicant's spirited argument, the Board found that "the phrase is commonly used to express devotion or appreciation, rather than to identify source, [and so] consumers would be unlikely to perceive it as a source identifier." In re Kollins Ezekh, Serial No. 88759272 (August 18, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).
The applicant feebly objected to the evidence submitted by Examining Attorney Shana McNamara as being "cumulative" or "duplicative," but the Board was unmoved. The evidence was not duplicative, and it showed third-party uses additional to those in the Examining Attorney's first batch of evidence. Applicant primarily argued that there was little if any third-party use of BUILT BY GOD, and so the Board observed that the supposedly "cumulative" evidence was very relevant.
Of course, the key question for the Board was whether "the relevant public, i.e., purchasers or potential purchasers of Applicant’s clothing, would perceive the phrase as identifying the source or origin of Applicant’s goods."
According to the Board, there was "no question that the phrase is religiously significant, to Christians especially." This was shown not only by the association of the phrase with Bible passages, but also from religious sermons and commentaries that focused on or were named for the phrase.
Moreover, even putting aside the religious significance of the phrase, "its widespread and typically ornamental use by third parties for clothing and other products is by itself a sufficient basis to find that it fails to function as a trademark."
The Board was not persuaded by the applicant's argument that the Office did not show the proposed mark to be widely used because the evidence did not establish how many products bearing BUILT BY GOD have been sold, and because the web listings for BUILT BY GOD products show an insubstantial number of reviews. The Board pointed out that in prior, analogous cases there was similarly no evidence specifically quantifying consumer exposure through sales information or reviews.
Finally, the Board observed that the granting of a registration here "would achieve the absurd result of hampering others in their use of the common phrase BUILT BY GOD for clothing or related products."
In short, the evidence shows that the phrase BUILT BY GOD is religiously significant and too commonly used, in connection with clothing for it to be perceived as a trademark, and Applicant should not be able to deny competitors (who according to the record also use the phrase) the right to use it freely. The phrase fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: Is this a WYHA?
Text Copyright John L. Welch 2022.
Seems like the takeaway here is that if you google your proposed t-shirt slogan/trademark and a bunch of other people are also selling t-shirts with that slogan on it, you're going to get a failure to function denial.
ReplyDeleteI've said it before and I'll say it again: These types of failure to function rejections are inappropriate on 1(b) applications. If it's merely descriptive or you want to say 2(d) based on known marks, OK. But how can you argue whether consumers would perceive the phrase as a mark if you have no idea how the phrase will be used? This case should have been allowed and then an objection raised to the eventual specimen, if appropriate.
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