On January 25, 2017, the USPTO released its Draft Examination Guide on “Incapable Informational Matter” (“Draft Guide”) for public comment. As it has with several prior requests for comment about draft examination guides, the USPTO has requested interested parties to submit their comments electronically through the USPTO’s Idea Scale “Trademark Policy Collaboration Site.” Initially, the USPTO requested that comments be submitted no later than February 13, 2017 (Trademark Alert 1/25/17), but has since extend the deadline until March 15, 2017. (Trademark Alert 2/7/17). To date, no comments have been posted about the guide.
In its January 25 Alert, the USPTO explained the purpose of the Draft Guide:
“The types of wording held as merely informational by case law is growing. Marks that include such wording must be refused because they do not identify the source of the goods or services. Each section of this guide discusses a common category of informational matter and covers case law, analysis, and possible response options. This guidance is intended to promote consistency by clarifying examination policies and procedures.”
See Alert; see also February 13 Alert (same message with minor editorial changes). More particularly, the Draft Guide focuses primarily on refusals to register marks that fail to function as source indicators (in other words, instances where marks, or portions of marks, “fail[ ] to distinguish the applicant’s goods/services from those of others or to identify a single source” and which are thus not qualified to be registered as trademarks because they “fail to function as a mark.” Draft Guide at 1.
EXAMPLES OF MATTER THAT FAILS TO FUNCTION AS A MARK
The Draft Guide focused on three main categories of “informational matter” that are incapable of functioning as a trademark and thus is not registrable: matter that is 1) “used in a manner merely to convey information about the goods/services;” 2) a widely-used message; and 3) a “direct quotation, passage and/or citation from a religious text.” Highlights in each category will be addressed below.
With respect to all of these categories, the determination of failing to function as a trademark is not new – instead only the explanation is new. Many of the cases that stand for the key propositions in this area are many years old. E.g., Draft Guide n. 16 (citing In re Standard Oil, 275 F.2d 945 (CCPA 1960)).
- Descriptive Matter that Only Conveys “Information” about the Goods/Services
In essence, if an applied-for mark simply conveys information about the goods or services, the underlying application for registration will be rejected. For example, the mark FRAGILE for labels and bumper stickers was deemed merely informative and not indicative of the source of the goods and services to which it applied. Draft Guide at 3 (citing In re Schwauss, 217 U.S.P.Q. 361, 362 (TTAB 1983)). In the Schwauss case, applicant tried to rebut the functionality refusal, arguing that the bumper stickers were applied to car bumpers (among other products), which are not fragile. In re Schwauss, 217 U.S.P.Q. at 362. The TTAB was unpersuaded and affirmed the PTO’s refusal to register. Specifically, the Board opined:
Aside from the fact that automobile bumpers may indeed be fragile in the sense that they may easily be dented or damaged when hit by another automobile or that the bumper sticker may be used on automobile bumpers in a sarcastic or tongue in cheek manner, we think this case is governed by the rationale discussed by U.S. District Judge Weinfeld in the Damn I’m Good case, [Damn I’m Good Inc. v. Sakowitz, 212 U.S.P.Q. 684 (S.D.N.Y. 1981)] at p. 687. As Judge Weinfeld stated in that case involving the phrase “DAMN I’M GOOD” used on bracelets, “. . . Competition in bracelets or other goods inscribed with this or other messages would be severely curtailed if manufacturers could receive trademark protection for each message they devised.” Similarly, in the present case, to allow registration would achieve the absurd result of hampering others in their use of the common word “fragile” on any label designed to be placed on any other object to indicate the fragility of said object.
The Draft Guide recommends that examiners investigate the applicant’s and its competitor’s websites, social media pages, print and online dictionaries, and encyclopedias, all with the aim of determining how the word or phrase is used in the industry and otherwise in common parlance. Draft Guide at 4.
- Widely-Used Messages
Applications will similarly be rejected when the marks with which they are associated comprise widely-used words or phrases, without something more to make the marks distinctive. For instance, the “Occupy Wall Street” and “Occupy Congress” slogans could be rejected if they promote a social message instead of indicate a single source for certain goods and services. “The original [Occupy Wall Street] and derivative [Occupy DC and Occupy Congress] messages may fail to function as marks if evidence shows that, at the time registration is sought, consumers recognize and perceive the wording to promote the social message rather than indicate source.” Id.
This applies to slogans that focus on their social, political, religious or similar message or expression instead of to the single source that supplies goods or services connected to this mark. Id.; see also id. at 5 (discussing refusal to register DRIVE SAFELY, THINK GREEN and PROUDLY MADE IN USA).
- Direct quotes, passages or citations to any religious text.
Excerpts from religious texts are also not capable of identifying a good or service with a single-source, and thus do not qualify for registration as trademarks. Instead, these quotes, passages or citations simply indicate endorsement of or support for a particular religious message or affiliation with a particular religion. No one applicant can exclude others from using these particular phrases; they “should remain in the public domain so that others may use it for similar purposes in connection with their goods or services.” Id. at 7 (discussing examples of unregistrable informational messages such as JOHN 3:16 and NO ONE COMES TO THE FATHER EXCEPT THROUGH ME). Any translation of the religious text will similarly be excluded. Id. at 8 (“If it appears in any version of a religious text, the wording must be treated as religious text.”).
However, some of these phrases have become part of our common, everyday language and would not necessarily have a religious connotation when considered in a vacuum; more context would be required. Id. For example, the mark EYE FOR AN EYE should be considered registrable in connection with t-shirts or retail stores because it has common meanings other than religious ones — including, for instance, representing “justice”. Id. (“[A] failure-to-function refusal as incapable informational message should not issue because consumers would likely not view this wording as a matter from a religious text indicating the provider’s religious affiliation and endorsement.”).
Similarly, parodies or homages should not automatically render a phrase “informational matter” that is incapable of functioning as a trademark. Id. at 9 (discussing text that “appears to make reference to concepts, figures or citations, but that are not direct quotations, passages or citations”). In the absence of a direct quote, passage or citation, no assumptions should be made; instead, the examiner must analyze the circumstances to determine whether the statement at issue “conveys support, admiration, sponsorship or affiliation with a widely-used religious message.” Id. (e.g., AUSTIN 3:16 is not equivalent to the JOHN 3:16 citation).
- Additional Refusals
The Draft Guide also recommends that examiners consider whether there are additional grounds for refusal. Examiners are permitted to refuse applications in this area not only for failing to function as trademarks, but also where the applied-for mark is merely ornamental or descriptive (without secondary meaning), among others. Id.
IMPACT OF FAILURE-TO-FUNCTION REFUSAL
Upon receiving such a refusal in an Office Action from the USPTO, an applicant may argue on substantive grounds that the refusal is ill-founded, in an effort to persuade the examiner that the mark *IS* capable of identifying the source of the particular goods or services. The examiner can consider these arguments and withdraw the refusal if appropriate.
However, the examiner is precluded from suggesting that the applicant can successfully surmount the refusal by amending his/her application to the Supplemental Register or trying to demonstrate acquired distinctiveness. Id. at 10 (“Acquired distinctiveness in part as to the incapable matter must not be suggested.”) (emphasis added).
Similarly, an examiner may not suggest that the applicant amend its filing basis from 1(a) (i.e., an application based on existing use of the mark in commerce) to 1(b) (based on a bona fide intent to use) or submit a substitute specimen because once it is determined that a word, phrase or other designation fails to function as a trademark, no amount of additional examples of the use of that designation in commerce – whether currently existing or to be developed in the future – will cause such a mark to suddenly have value as an indicator of source of particular goods or services.
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