In order for a word, phrase or other device to operate as a trademark, it must convey to purchasers or potential purchasers a single source of the goods or services in connection with which the mark is used – or, simply put, it must be a “source indicator” for those goods and services. This is true whether the trademark owner seeks to simply use a mark at common law or to apply for registration of the mark with the U.S. Patent and Trademark Office (“USPTO”).
In a recent decision, the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the Trademark Office Examining Attorney’s refusal to register the mark DESIGNED, SOURCED, AND BUILT IN THE USA in connection with the following goods:
Class 1: “a wide variety of chemicals for a wide variety of industrial uses”;
Class 5: “Hand-sanitizing preparations; disinfectants”;
Class 10: “Face masks for use by health care providers; surgical masks; human face protectors, namely, transparent face shields for use in the medical and dental fields; sanitary masks for medical wellness purposes; respiratory masks for medical purposes; masks for use by medical personnel”; and
Class 20: “Freestanding sneeze guards, namely, plastic shields for protection between retail clerks and customers; plastic shields to isolate retail clerks from customers; plastic shields to guard retail clerks against sneezes and coughs of customers; plastic dividers for protection between retail cashiers and customers”.
In re NuGeneration Technologies, LLC, 10 TTABVUE, Ser. No. 88852858, 88866690 (TTAB Apr. 7, 2022) (non-precedential) (appeal consolidated under Ser. No. 88852858); see also application file histories at Ser. Nos. 88/852,858 (Classes 1 and 5, filed March 30, 2020) and 88/866,690 (Classes 10 and 20, filed April 9, 2020). Both applications were filed on an “intent to use” basis, but Applicant did not submit evidence of any use in commerce for either application.
The Examining Attorney essentially refused registration of the mark DESIGNED, SOURCED, AND BUILT IN THE USA on the grounds that it failed to function as a trademark – in particular because “the wording is merely informational and constitutes a commonplace phrase that is widely used in the marketplace.” 10 TTABVUE 2 (Ser. No. 88/852,858).
In affirming the refusal to register the mark, the Board agreed with the Examiner that the phrase simply conveyed “information to the consumer to support American made goods and services” that also “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.” Id. at 16-17.
The Board disagreed with the Applicant’s position that the Examiner’s evidence of common usage of separate components of the mark (e.g., “designed in the USA” and “sourced in the USA”) was insufficient to show that the longer phrase, DESIGNED, SOURCED AND BUILT IN THE USA was in “widespread use.” Id. at 14. In so doing, the Board explained that the evidence of use of these components, spanning multiple industries in connection with varied products, was “sufficient to show a marketing environment where consumers are accustomed to the use of these similar informational phrases by businesses.” Id.
By way of comparison, the Board pointed to other marks that had been refused registration as commonly-used phrases in business that convey support for an American ideal – and do not operate as an indication of a single source of specific goods or services:
- GOD BLESS THE USA – Ser. No. 87/168,719 (In re Lee Greenwood, 2020 USPQ2d 11439, at *3 (TTAB 2020) (considered simply an “expression of patriotism, affection, or affiliation” with the US))
- INVESTING IN AMERICAN JOBS – Ser. No. 86/261,962 (In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1156 (TTAB 2019))
- PROUDLY MADE IN THE USA, Ser. No. 74/375,437 (In re Remington Prods., 3 USPQ2d 1714, 1715 (TTAB 1987)) *Westlaw account required to access this decision.
Interestingly, the Board relied on the analysis in the 1987 Remington decision for the proposition that, “[i]t is common knowledge that today’s American marketplace has a surplus of foreign-made goods and that American manufacturers are anxious to encourage purchasers to give preference to American products.” Id. at 16 (quoting In re Remington Prods., at 1715). Despite the passage of 35 years, this marketplace reality remains the same today.
Refusal to register the phrase DESIGNED, SOURCED AND BUILT IN THE USA was affirmed as “merely informational matter” that would not be perceived “as a source of Applicant’s goods.” Id. at 17. Essentially, the Board concluded that this phrase failed to function as a trademark that would allow the “relevant public, i.e., purchasers or potential purchasers of Applicant’s goods” to perceive the phrase as “identifying the source or origin of Applicant’s goods.” See id. at 5.
Recommended Additional Reading:
- USPTO’s Trademark Manual of Examining Procedure (TMEP) § 904.07(b) (Whether the Specimen Shows the Applied-for Mark Functioning as a Mark)
- TMEP § 1202.04 (Informational Matter)
- TMEP § 1202.17(c) (Failure to Function)
- TMEP § 1301.02(a) (Matter that Does Not Function as a Service Mark)