Wednesday, May 29, 2024

"ASSHOLES LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB

Last year, the Board affirmed a refusal to register the proposed mark ASSHOLES LIVE FOREVER, in the stylized form shown below, for various goods in 14 classes, finding that the phrase fails to function as a trademark. [TTABlogged here]. The same applicant met the same fate in this attempt to register that same phrase for "Online retail store services featuring clothing, jewelry, bags, gifts, home goods, hats, blankets, mugs, belts, branded gift bags, floor mats, keychains, novelty toys for playing jokes, and pillows." In a 41-page opinion, the Board concluded that the phrase is used to convey a commonplace, informational message that consumers would not perceive as a source indicator. In re Kirill’s Big Brain, LLC, Serial No. 97359799 (May 22, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Board observed that "[t]he critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives the term sought to be registered." Univ. of Ky., 2021 WL 839189, at *13. "Where the evidence suggests that the ordinary consumer would take the words at their ordinary meaning rather than read into them some special meaning distinguishing the goods and services from similar goods and services of others, then the words fail to function as a mark." In re Ocean Tech., Inc., Ser. No. 87405211, 2019 WL 6245131, at *4 (TTAB 2019) (internal punctuation omitted).

The Examining Attorney argued that ASSHOLES LIVE FOREVER "is commonly used as a rallying cry of sorts for those who self-describe as or otherwise embrace the 'asshole' moniker. The phrase is one of celebration and means that they will be noticed and remembered and that they or those like them will always exist." In support of that argument, the Examining Attorney submitted examples of use of the phrase ASSHOLES LIVE FOREVER by third-parties, including on clothing, water bottles, mugs, bracelets, and wall hangings [??? - ed.], and as a blog post title and a song title.

The applicant argued that the USPTO's evidence was too limited, but the Board pointed out that "the Examining Attorney need only establish a reasonable predicate that the phrase fails to function as a mark; the Examining Attorney is not required 'to prove to a moral certainty' that the phrase would not be perceived as a source-indicator. Brunetti, 2022 WL 3644733, at *19."

Applicant feebly asserted that the evidence showed use of ASSHOLES LIVE FOREVER "in an ornamental fashion, but that was the Examining Attorney's point: the phrase "would be perceived as a common message whether described as a parody, meme or lament; it does not indicate the source of Applicant’s services. A consumer is likely to buy the goods or services that prominently display the phrase because of the message conveyed. Eagle Crest, 2010 WL 3441109, at *3."

Applicant also argued that the examples provided by the Examining Attorney are not for online retail store services but are instead ornamental uses on clothing and other goods. The Board, however, observed that "[t]he test is not whether the proposed mark is used on goods or in connection with services but whether, upon seeing the proposed mark, the consumer will view it as conveying a message or as a source-indicator."

Applicant made a number of additional arguments in an attempt to overcome the Office's evidfence, pointing to third-party references to ASSHOLES LIVE FOREVER as a brand and to purported copying by infringers. The Board rejected the copying argument and was unmoved by the third-party references: "even though some of the evidence also refers to ASSHOLES LIVE FOREVER as a brand, this evidence indicates general consumer recognition of the phrase for the message conveyed. Simply calling ASSHOLES LIVE FOREVER a brand cannot transform an otherwise unregistrable designation into a registrable mark."

The entirety of the evidence of record indicates that there are several third-party uses of the phrase on various goods that do not appear to be associated with Applicant, thereby suggesting that the broader class of consumers would perceive only the common meaning of the phrase. See Mayweather, 2020 WL 6689736, at *3. Thus, “even if there were evidence that some consumers associated the phrase with Applicant, that alone would not entitle Applicant to appropriate for itself exclusive use of an otherwise common informational phrase and thereby attempt to prevent competitors or others from using it….” Wal-Mart Stores, 2019 WL 193990, at *12.

Applicant further argued that some of the USPTO's evidence post-dated its first use and thus represented infringing products, but it cited no authority for the proposition that the Office’s evidence must be disregarded because it post-dates Applicant’s first use. "The Board’s failure-to-function cases do not impose such a requirement, and they have invariably considered evidence of third-party use that post-dated use or the filing dates of the subject applications."

Read comments and post your comment here.

TTABlogger comment: The Board distinguished the "100% THAT BITCH" case, where "much of the evidence of third-party use specifically [sought] to associate the goods … with Lizzo." Here, the third-party evidence made no reference to the applicant.

Text Copyright John L. Welch 2024.


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