Failure to …. whatever (Best of 2017)

Originally posted on Oct 16, 2017.“Failure to function as a trademark” is a favorite topic around here, and it’s getting more and more attention.  Except when it’s not.

What am I talking about?  Even I am tired of my own voice, so I’ll let Jessica Neer McDonald explain, as she did last August (2017), what is this failure to function:

When applying for trademark/service mark registration with the U.S. Patent and Trademark Office (USPTO), an examining attorney reviews the application to determine whether it complies with applicable statutes and rules. If there are any substantive, technical, or procedural deficiencies, the examining attorney will likely issue an Office Action letter explaining any of these refusals. One of these refusals can be based on the proposed mark failing to function as a trademark because the proposed mark merely communicates information about the goods / services, uses widely used commonplace, social, political, or religious messages, or directly quotes passages or citations from religious texts. Some examples include: “I ? DC” for clothing items; “ONCE A MARINE, ALWAYS A MARINE” for various clothing items; “BRAND NAMES FOR LESS” for retail store services; and “PROUDLY MADE IN THE USA” for electric shavers.

You’d think — right?

And yet, now, this, via John Welch:

The USPTO refused registration of the mark shown below left, for “T-shirts,” finding the mark likely to cause confusion with the mark shown below right, for “clothing, namely hats and shirts.” The goods are legally identical, but what about the marks? How do you think this came out? In re Khalid Akil White DBA BLKMPWR, Serial No. 86644303 (September 29, 2017) [not precedential] (Opinion by Judge Linda A. Kuczma).

Applicant maintained that the dominant portion of his design is the map of Africa, while in the cited mark the map of the United States is dominant, that the cited design suggests that Africa dominates the United States, and that the alteration of his design to fit the United States outline within the map of Africa profoundly changes the commercial impression of his mark as compared to the cited mark.

Never mind the LIKELIHOOD OF CONFUSION question John wrote about.  The tell is in the scare quotes he used in the phrase, “for ‘T-shirts.'”

Pro tip:  “For T-shirts” is pretty much always, and virtually never not other than, a clue that the “trademark” in question is for garbagio goods and IS NOT BEING USED AS A TRADEMARK.  Indeed, one of John’s pros, Alex B., nailed it in the comments:

I guess we can assume that both of these marks function as marks and are distinctive? They strike me as ornamental.

‘Cause they are, and that make ’em not trademarks.  Make ’em pictures to put on a t-shirt.  At best. And if they’re not ornamental — which they may not be, after all, because they are ugly — they are just “things people want to say,” whether on a t-shirt or otherwise.  That’s not a trademark, absent the very unlikely establishment of the saying of that thing with any particular sayer (much less singer).

It’s not as if the PTO isn’t trying.  As Jessica noted in her blog post, the PTO issued fresh failure-to-function guidance just this summer, in July 2017.  In fact I like this summary of the catch-phrase-as-trademark fallacy in particular, in which the PTO, well, nails it too:

Some matter comprises a social, political, religious, or similar message in widespread use or widely understood. In this category are messages that become popular and widely used after a recent newsworthy event or occurrence. The messages are then spread through use by consumers, business owners, print and television media coverage, and social media appearances such that they become known to significant portions of the public by frequent exposure (e.g., “viral” concepts or catchphrases). As such, these messages are not attributed to and do not operate to indicate a single source, and thus, they fail to function as marks.

Goods/services used in connection with these widely used social, political, ideological, religious, and similar messages may be purchased because of the expressive sentiment the service providers or the goods themselves convey. These messages are widely used by multiple third parties to convey support and admiration for or affiliation or affinity with the ideas conveyed by the message. Because consumers are accustomed to seeing these messages used by variety of third parties, it is unlikely that consumers will perceive them as marks indicating a single source.

Right?  Of course right! So how do we get this Africa graphic business going up to the TTAB on a LIKELIHOOD OF CONFUSION question when it isn’t even a trademark at all?

Notwithstanding that the above-cited guidance was issued while this appeal was pending, and long before the basis for refusal was finalized, none of this is new.  No, we can’t blame the TTAB, which is in the reviewing business.  It takes the PTO’s final office actions as it gets them.  Though you have to wonder what we were thinking, garbagio-goods-wise, and perhaps otherwise, when we decided to include this illuminating passage in the decision:

Inasmuch as Registrant’s mark is registered for shirts, which is broad enough to encompass Applicant’s T-shirts, the goods are identical in part.

FN 7: See definitions of “T-shirt” from http://www.collinsdictionary.com/dictionary /english/tshirt, attached to Examining Attorney’s Appeal Brief (8 TTABVUE 16), which is defined as “a cotton shirt with no collar or buttons…” and “1. a collarless, cotton undershirt with short sleeves; 2. a similar pullover knit sport shirt.” The Board routinely takes judicial notice of dictionary definitions when supplied with a copy of the definition, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

Ok, yeah, t-shirts.  Now we’re clear on that.  T-shirts, in fact, seem very much to be the unspoken subject, or a very likely one, in this passage from the PTO’s July 2017 guide:

Ornamentation: In certain situations, matter that fails to function as a trademark because it merely conveys information may also fail to function due to it also being perceived as ornamental matter. The evidence of record should be reviewed to determine whether the wording or other matter is used in a merely ornamental manner, taking into consideration the size, location, and dominance on the goods or in connection with the services. For more information about this refusal, see TMEP §§1202.03–1202.03(g).

And it’s not exactly something from outer space, inferring “T-SHIRTS!” from the above — because what does the cited provision of the TMEP say?:

1202.03(c)    “Secondary Source”

To show that a proposed mark that is used on the goods in a decorative or ornamental manner also serves a source-indicating function, the applicant may submit evidence that the proposed mark would be recognized as a mark through its use with goods or services other than those being refused as ornamental. . . .

In [In re] Paramount [Pictures Corp., 213 USPQ 1111, 1112 (TTAB 1982)], the Board stated that “[t]he ‘ornamentation’ of a T-shirt can be of a special nature which is [sic] inherently tells the purchasing public the source of the T-shirt, not the source of manufacture but the secondary source.” 213 USPQ at 1112. Applying the test set forth in Olin, the Board found that “the paired names ‘MORK & MINDY’, while certainly part of the ornamentation of the decal, also indicate source or origin in the proprietor of the Mork & Mindy television series in the same sense as the stylized ‘O’ in Olin.” Id. at 1113. The Board noted that “while purchasers may be accustomed to seeing characters’ names and images as part of the ornamentation of decals, T-shirts and the like, they are also accustomed to seeing characters’ names and images used as trademarks to indicate source of origin.” Id. at 1114. . . .

A series of ornamental uses of the proposed mark on various items will not establish that the proposed mark functions as an indicator of secondary source; use as a trademark for the other goods or services must be shown. See In re Astro-Gods Inc., 223 USPQ 621 (TTAB 1984) (affirming the refusal to register ASTRO GODS and design for T-shirts, despite applicant’s ornamental use of the proposed mark on other goods and appearance of applicant’s trade name “Astro Gods Inc.” on the T-shirt as part of a copyright notice).

This Afro-T seems more ASTRO GODS than MORK & MINDY, but there’s no discussion of secondary source evidence in In re Khalid Akil White DBA BLKMPWR, and that’s not surprising; there’s no discussion of whether the “mark” is ornamental, so there would be no need for secondary source evidence.  And there’s no discussion of ornamental use, as opposed to trademark use, because it’s not the TTAB’s job to raise an issue not raised by the examining attorney — and failure-to-function, indeed the very subject of ornamentation, was not.

This doesn’t always happen, but it happens sometimes.  Actually, it happens a lot, and it’s not just me who says so:Yes; my friend Professor Alexandra Roberts says so!  She says more specifically so like this:

[U]se as a mark and distinctiveness are both necessary for trademark protection, because both play a role in determining whether consumers will perceive matter as a mark. So how did use as a mark become the red-headed stepchild of trademark law, while distinctiveness got all the glory?

Distinctiveness . . . is one of trademark law’s stickiest stories. Its creation and application are products of judicial intuition, not empirical data. Distinctiveness doctrine instructs that a word mark can be filed in one of five categories: it is fanciful, arbitrary, suggestive, descriptive, or generic for the goods or services at issue. That categorization, the story goes, reveals whether consumers will perceive matter as a mark the first time they encounter it, or will only come to view it as a mark in the future, after prolonged exposure to it in the marketplace.

In focusing on static, inherent characteristics to determine whether something qualifies as a trademark, [the decisional law] leads factfinders to downplay or ignore the other half of the puzzle: namely, context. The USPTO deems a mark’s inability to distinguish goods or services and indicate source due to its use or lack thereof a “failure to function.” Studies show that context and manner of use, not just distinctiveness, impact whether or not consumers will understand matter as a trademark when they first encounter it. But while USPTO examining attorneys pay at least some attention to use in determining eligibility for registration, federal courts frequently ignore it. And factfinders at all levels are often guilty of artificially separating the two inquiries. . . .

[T]he relationship between use as a mark and distinctiveness is interdependent and inverse: the more distinctive a mark is, the fewer traditional indicators of trademark use are needed to ensure consumers will perceive it as a mark, and vice-versa. Use as a mark is thus particularly influential when it comes to marks whose status falls on the border between inherently distinctive and merely descriptive.

This is heavy stuff.  I am going to read this paper in full, however, and when I am done Alexandra is going to be right.

Meanwhile, however, and until all that learning gets disseminated among advocates, decisors and theorists in our pleasant vale of the law, I propose a somewhat simpler, stop-gap approach:

If the description of goods just says “T-shirts,” it’s a damned good bet it’s not a damned trademark.

The sooner applicants learn that, the faster the real trademarks will get examined, because the PTO won’t be busy with garbagio trademarks.  The sooner applicants learn that, the more likely it is that people will stop misapprehending trademarks as monopolies on expression and obsessing over them.  And the sooner applicants learn that, the less likely garbagio cease-and-desist letters are to land in someone’s inbox, spoiling their day and their business model because of an improvidently issued trademark registration for a word or phrase that is no trademark at all.

Applicants will learn it when the PTO consistently teaches it; the July 2017 guidance will help.

And just watch:  Because of this new era in human understanding of the failure-to-function bar, the registration examination backlog will ease; PTO examining attorneys, their burdens lightened, will reacquaint themselves with nature, the humanities and spiritual pursuits; private-practice lawyers will stop taking money from would-be bumper-sticker magnates to prosecute frivolous applications to register non-trademarks; people will stop using “trademark” as a verb and, simultaneously — because that eventuality is as nigh upon us as what follows — the farmer and the cowman will be friends.

Call me a dreamer. We all fail to function a little.

UPDATE:

If it’s ON a t-shirt it’s ornamental/fails to function; on or under the collar it’s a mark. #itsthatsimple #purgetheregister https://t.co/GEYtIi3ziY

— Jessica Stone Levy (@BeautyMarks) October 16, 2017