TTAB Refused Registration for Commonplace Phrase That Fails to Function as a Trademark

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 No. 88852858, 88866690 (TTAB Apr. 7, 2022) (non-precedential) (appeal consolidated under Ser.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)

Common Questions: What Kind of IP Protection Should I Pursue?

We frequently receive questions from business owners asking for intellectual property (“IP”) advice that combine legally unrelated terms, such as asking whether they should “copyright their logo”, or “trademark their idea”, or “get a patent on their design”.*  While it’s possible for IP owners to “layer” their protection – in other words, the same design might be protected under copyright and trademark law, and the same product configuration might be subject to a design patent as well as copyright and/or trademark protection – in many cases, a rights holder may only be exploring one kind of IP protection at a given time. This post is intended to simply define basic terms (particularly under U.S. law) to help foster conversations regarding obtaining the right protections for your IP – but if you need specific advice about what kinds of IP rights apply to your specific circumstances, you should talk with a lawyer who has experience in this area.

* Note that in some circumstances, it is possible to obtain a design patent – so asking to “patent a design” does not necessarily lead to an impossibility or a mismatch between the type of work and the applicable law. However, a mismatch occurs when the question asks whether unique artwork could be patented – where the questioner was really asking about obtaining a utility patent to protect an artistic work that has no functional elements.

Patents

Patent law governs the rights of inventors of new and useful ideas, including a process and/or machine, or an ornamental design, provided that these inventors have applied for – and been granted by the U.S. government (at the U.S. Patent and Trademark Office (USPTO)) – exclusive rights to reduce that invention to practice and exclude others from practicing the invention for a period of time set by statute. That period of time (“duration”) can be changed by Congress under certain situations. As a result, one patent’s duration might be different than another’s.

In addition, the statutory duration of a design patent currently is less than a utility patent, so it is important to consider what kind of patent has been issued before concluding that patent rights may or may not exist at any given time.

In order to obtain a patent, the inventor is required to disclose the new invention with sufficient detail that any other person skilled in this particular art would be able to recreate the invention. However, the benefit of obtaining a patent is the ability to exclude others from practicing the invention during the statutory period of exclusivity. If an inventor decides that it never wants to disclose the invention – but instead wants to protect it as a “trade secret” – then the inventor must take extreme care not to reveal the secret to others, including by publication or other disclosure, without the protections of non-disclosure agreements or security measures designed to keep the secret out of the hands of competitors or the public.

Finally, in order for patent rights to issue, an inventor cannot have already disclosed his invention to the public (with certain exceptions) before filing his application for patent protection – unlike copyrights and trademarks where the Work can have been published or the mark can have been used in commerce in connection with specific goods or services long before the application for registration is filed.

As I am not a patent lawyer, I will simply note that patent rights are not automatic; they must be applied for and granted by the USPTO through an issued patent before they can be enforced against others. Even after issuance, there may be limitations in the scope of a patent. Interested parties should consult with authorized patent practitioners (whether patent attorneys or patent agents) for any specific advice in this area.

Trademarks

Trademarks can be any word, phrase, symbol or design, sound, color or other indicia of source, or a combination of such indicia, that identifies and distinguishes the source of the goods of one party from those of others. A “service mark” performs the same basic function as a “trademark”, but applies to the source of a service rather than of a product (i.e., goods). (For simplicity, this post refers to both trademarks and service marks as “trademarks.”)

Trademarks generally must be unique enough that purchasers or potential purchasers associate them with one particular source’s goods or services – and only that source’s goods and services. While tempting, choosing a mark that describes the goods or services will not create a strong trademark and will not permit purchasers or potential purchasers to distinguish your goods from those of others – particularly if those descriptive words are commonly used by others in your industry.

Trademark rights in the U.S. require “use in commerce” – in other words, using a trademark in connection with particular goods or services offered in interstate commerce offered by a single source. Without that “use in commerce,” such words, phrases or logos/designs would not develop the goodwill associated with a mark or acquire any trademark value. You might have coined an interesting phrase, and maybe you were the first to publish it on the internet, or put it on the front of a t-shirt or on a mug – but unless the mark has been used as an “indicator of source” of particular goods or services offered to the public, then it does not function as a trademark.

Even without obtaining a federal registration, a trademark owner can establish exclusive rights to use a particular trademark based on its first use of the trademark in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Relying on common law rights alone, however, may restrict your trademark rights to a particular geographic region in which use actually occurs. You could assert your common law rights against a newcomer who enters your geographic area, offering the same (or similar) goods or services under a confusingly similar mark. However, that newcomer might acquire senior rights in other geographic areas that could prevent the later expansion of your use. (Except in the case of famous marks which may be subject to broader protections in broader geographic regions, even if there is no use in commerce in that region.) Federal registration of one’s marks with the USPTO, while not required in order for trademark rights to exist, offers more comprehensive protection, including a presumption of nationwide use, than reliance upon common law rights alone.

Trademark rights can be perpetual, provided that trademark owners use their marks consistently and continuously in connection with specific goods or services in interstate commerce. If a trademark owner stops using a mark over a long period of time (generally three years or more, depending on the circumstances), with an intent not to resume use, marks can become abandoned, allowing a newcomer to step in later and start using the same mark without creating confusion with the original owner’s prior use. As with many conclusions in trademark law, the determination whether rights have lapsed is a highly fact-based determination and should be discussed with counsel if this is a concern.

Copyrights

Copyright rights exist from the moment of creation of a creative work, upon “fixing the work in a tangible medium of expression.” So, typing up a novel on paper, or saving it to disk or to the hard drive of a computer, would constitute a tangible medium of expression, just as drawing an original illustration on paper or chiseling a statue out of marble would. Copyright law does not protect the idea depicted in the creative work, but just the expression of the idea. See also a prior blog post on Can I Copyright My Knight in Shining Armor Story? (discussing common story themes and the limitation of copyright protection to the expression of the theme) and a series of posts on the copyrightability of fictional characters.

Creation of a copyrightable work entitles the author to several exclusive rights under U.S. law, including rights: (1) to reproduce (or, copy); (2) to prepare derivatives; (3) to distribute copies by sale, other transfer, rental, lease or lending; (4) to perform publicly; (5) to display publicly; and (6) (in the case of sound recordings) to perform by digital audio transmission. 17 U.S.C. § 106. Copyright owners also have the exclusive right to withhold their works from public circulation if they so choose.

Notwithstanding that copyright rights attach upon the moment of fixation of the expression in tangible form, under recent U.S. Supreme Court law, a copyright owner cannot enforce its copyright rights against others unless it is has filed for – and received – registration of its copyright rights with the U.S. Copyright Office. See Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S.Ct. 881 (2019); see also prior posts in this blog explaining the Fourth Estate decision. Importantly, if an author happens to register its rights with the Copyright Office before the alleged infringement begins, then the author is permitted to seek statutory damages (up to $35,000 per work, or up to $150,000 per work if the infringement is found to be willful) instead of having to prove the full scope of actual monetary losses resulting from the infringement. Filing before the infringement occurs also permits the author to seek recovery of its attorney fees from the infringer if it prevails on an infringement claim (and if certain other criteria are met).

An author’s exclusive rights under the Copyright Act last for the life of the author, plus 70 years. 17 U.S.C. § 302. If a work was created as a work made for hire, anonymously or pseudonymously, then copyright protection lasts for 95 years after the date of first publication, or 120 years after the date of creation. Id. As a general rule, therefore, if an author is still living, one should assume that any tangible work created by this author is protected by copyright, and permission in advance would be required before anyone else could copy, display or distribute those works and not infringe the author’s exclusive rights.

Additional Recommended Reading

As mentioned above, the purpose of this post is to provide some guidance on the different terminology used to describe different IP rights. Some additional resources that are relevant to these basic concepts can be found below.

How Not to Genericize Brands: “ZOOM” Calls During COVID

Ever present in our business communications are requests for conference calls to be held using video conferencing platforms. However, these requests are generally not quite so long-winded when our colleagues describe them.

Instead, it’s more common to see a request for a “Zoom Call” or a “Meeting By Zoom” – but most recently, I received an email from a secondary school teacher regarding a calendar invite for “The Zoom” and from a fellow lawyer, who offered to circulate “a Zoom.” (In both cases, I assume that what they meant to say was that they were sending a “calendar invite for a video conference being set up through Zoom’s platform”.) But I get it. That’s a lot of words.

As a trademark attorney, however, every time I see one of these quickly-worded references to trademarks owned by others, I cringe. I know there’s no intent to undermine someone else’s trademark rights, or to devalue hard-won brands. And, at the same time, it’s clear that brands like “ZOOM” are quickly becoming household names, especially given this “it’s-quarantine-we’re-all-working-from-home” environment.

Becoming a household name is good . . . right? In the trademark world, I humbly suggest that “no, not all press is good press” and certainly not when used like that. If a carefully developed, original brand name suddenly becomes the generic term for a broader type of product or service, what happens to that investment in the development of this brand from its inception? Short answer – the value of that investment could be completely eliminated.

Former Trademarks – Now Generic Terms

Consider the following former trademarks, which have lost their unique association with the specific source for the goods/services delivered under the marks, prohibiting the original owners from excluding others from using these terms to describe their own (similar) goods or services:

  • MIMEOGRAPH – Reg. No. 356,815 – Registered as a “coined word” on May 10, 1938 in connection with “flexible writing plates” with a first use date of March, 1932. This registration expired on February 26, 1986 when it was not renewed by the owner of the mark, A.B. Dick Company. Note: There is a notation in the TSDR record that a cancellation action was filed December 5, 1983, but the records are old enough that they are not available electronically through TTABVUE. For an interesting history of the development of the machine sold under the MIMEOGRAPH mark, see “A.B. Dick Company, est. 1884,” Made in Chicago Museum Blog (available as of Sept. 1, 2020).
  • ZIPPER – Reg. No. 399,503 – Registered on January 12, 1943 in connection with “conveyor or transmission belting composed chiefly of fabric and/or natural rubber or synthetic compounds having the characteristics of rubber.” This registration expired on January 10, 1986 when it was not renewed by its owner, B.F. Goodrich & Co. Notably, the USPTO lists the location of the file history for this registration as “file destroyed” on June 1, 1989.
  • ESCALATOR – Reg. No. 34,724 – Registered as an “arbitrary word” on May 29, 1900, to Charles D. Seeberger, assigned to the Otis Elevator Company, and renewed May 29, 1930, in connection with “passenger elevators”. The Registration was cancelled in 1950 because the word had become generic for moving staircases instead of an indicator of the source of these staircases; the Registrant itself even used the term generically in its patent applications and magazine advertisements to refer simply to the types of stairs, not to its own brand of these stairs. Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (Comm’r Pat. 1950) (mark cancelled after being registered for 50 years).
  • ASPIRIN – In use in the U.S. since 1899 as an “artificial trademark” associated with a patent for the drug, acetyl salicylic acid. Bayer started to sell the product directly to the public beginning in 1915, under the label “Bayer – Tablets of Aspirin.” The patent expired in 1917; a patent examiner thereafter declared the trademark no longer valid and ordered its cancellation on November 30, 1918. Bayer did not appeal the cancellation, but instead sued United Drug Company for trademark infringement relating to its use of the name “Aspirin” in connection with sales of a competing product (same formulation). The district court concluded there was no infringement because “ASPIRIN” was the generic name for the drug and Bayer had no exclusive rights in it after the patent expired and given its own generic use of the term. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (Learned Hand, J.); accord In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir. 2007) (“Aspirin is generic for analgesics and has been generic for this class of pharmaceuticals for over eighty years.”).
  • TRAMPOLINE – Reg. No. 402,868 issued August 17, 1943 in connection with “tumbling devices, consisting of canvas sheet stretched by springs in a rigid framework”, with a first use date of March 27, 1935. In a thorough discussion of the common uses of the term “TRAMPOLINE” in the marketplace in connection with these types of devices, a district court concluded that the term was generic for these goods, invalidated the trademark registrations and dismissed a complaint for trademark infringement that the Registrant had filed against a competitor. Nissen Trampoline Co. v. Am. Trampoline Co., 193 F. Supp. 745, 748, 749 (S.D. Iowa 1961) (“The court finds that the term ‘trampoline’ is completely generic for the type of goods here involved; that the plaintiffs have no secondary meaning in the term ‘trampoline’ and the purchasing public does not understand the term to mean the plaintiff’s product or to represent the equipment of only a single manufacturer.”).

Do you associate these terms with a single source of the goods or services with which they used to be associated? Certainly not. These once-unique brands have now become generic. They can no longer be used to identify the single company that is known to provide these specific goods and services branded under these specific marks.

How to Properly Use a Trademark

Rather than turning these unique brands into common terms that can no longer function as trademarks (i.e., can no longer function as a source indicator for a single source of goods or services), brand owners and consumers alike should be looking at brand names as adjectives, not as nouns.

To avoid delving into a boring grammar lesson, consider this: if you walk into a store and say “I’m looking for facial tissue” or “where can I find copy paper” – are you asking for a certain brand? No. You’re looking for a specific type of product, regardless of what brand it is.

In contrast, what if you saw a sales circular and found out that a particular brand name of facial tissues were on sale – would you want to ask for them by brand name? Sure – if you want the sale price. Would you be happy with getting a box of facial tissue of any brand for this purpose? Probably not – particularly if there were a big price difference, and you were shopping specifically for that item at that price.

Trademarks can also help companies (and the ultimate consumers) differentiate their goods from the goods of others – particularly if there’s a significant difference in qualities or features of the brand name product. For instance, perhaps a particular brand of dishwasher is the only one to include a garbage disposal or is particularly well known for its quiet operation. Or perhaps a specific brand of photo printer paper is well known for its color saturation or the clarity and long-life of the image printed onto it. These are features that consumers might shop for specifically – and being able to request that specific product by its unique trademarked name provides additional value to consumers and allows manufacturers to distinguish its goods from those of its competitors.

As a result, even among the sea of ZOOM calls we are participating in or merely watching, we should endeavor to use trademarks correctly: to refer to a single source of particular goods or services and to avoid genericizing those valuable brands.  For instance:

  • Use marks as adjectives to describe the actual source of goods or services, followed by the generic product name (e.g., KLEENEX facial tissue or MAYTAG dishwashers).
  • Never use the mark as a verb (e.g., Say “I’m going to use a Xerox copier . . . ” but not “I’m going to xerox that document.”).
  • Never use the mark as a noun or make it plural (e.g., Say “BAND AID bandages” but not “BandAids”).

Other Resources

USPTO’s Recently Announced Pilot Program on Fraudulent Specimens

This is Part III in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.”  Part II was “Common Questions: How to Prove Use in Commerce (Specimens)“. This Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

On March 6, 2018, the USPTO announced that it was launching a pilot program to uncover fraudulent specimens filed in support of use-based applications. The USPTO described these specimens as “digitally altered” or manipulated. For instance, the USPTO recently refused registration to the following use-based applications for which the specimens were held to be fake: Continue reading

Common Questions: How to Prove Use in Commerce (Specimens)

This is Part II in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.” Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

Clients frequently ask for guidance about what specimens (i.e., examples of current use of their trademarks or service marks) to submit in support of their applications for registration with the U.S. Patent & Trademark Office (USPTO). The answer, to some degree, is “it depends.”

What Specimens are Acceptable for Which Goods/Services?

For additional information on this topic, see also Common Questions: What’s the Difference Between a Trademark and a Service Mark?

The basic guidance from the USPTO’s Trademark Manual of Examining Procedure (TMEP) is as follows: Continue reading