TTAB Cases
In re Hulting,
107 U.S.P.Q.2d 1175 (TTAB June 10, 2013)
CASE SUMMARY
FACTS
Applicant Thomas Hulting filed an intent-to-use application to register the mark “No More RINOs!” for bumper stickers, paper signs, clothing, and campaign buttons.
The examining attorney refused registration under Sections 1, 2, and 45 of the Lanham Act on the ground that the mark was “merely ornamental and informational matter and does not function as a mark” for goods in the classes applied for. The examiner submitted evidence showing that “No More RINOs!” is a commonly used and well-recognized political slogan meaning “No More Republicans In Name Only.” Applicant responded by submitting substitute specimens that included the tagline “by Statesman Enterprises.”
After the examiner’s final refusal of registration, Applicant appealed to the TTAB.
ANALYSIS
The TTAB first noted that not every designation placed on or used in connection with a product functions as a trademark. The TTAB explained that common laudatory phrases ordinarily used in business or in a particular trade or industry are not registrable, citing to ONCE A MARINE, ALWAYS A MARINE (an informational slogan “to express support, admiration or affiliation with the Marines”); DRIVE SAFELY (“an everyday, commonplace safety admonition”); and THINK GREEN (“an informational slogan encouraging environmental awareness”). The critical inquiry, the TTAB stated, is how the designation is perceived by the relevant public. In making such a determination, the TTAB looks to specimens and other evidence showing how the designation is used in the marketplace.
Here, the TTAB explained that evidence submitted by the examining attorney showed that consumers are accustomed to seeing the phrase “No more RINOs!” on clothing and other items from many sources. Consumers therefore would not perceive the phrase as a source indicator but instead as a political slogan.
The TTAB also determined that the placement of Applicant’s proposed mark in large, prominent lettering in the center of each specimen was consistent with informational or ornamental use, not trademark use. The TTAB explained that such prominence was more consistent with conveying an informational message rather than signifying a brand or an indicator of source. The TTAB noted that although the phrase “No More RINOs!” displayed on the T-shirt, shown above, was proportionally smaller than the other specimens of use, it still did not have the commercial impression of a source indicator, given the phrase’s significance as a political slogan.
Refusal was improper, Applicant asserted, in view of the substitute specimens he filed bearing the tagline “by Statesman Enterprises.” But the TTAB concluded that this tagline was irrelevant because it was not part of the applied-for mark and it did not render the slogan capable of functioning as a mark. Even if the tagline did convey that the goods came from a particular source, the tagline communicated that information, not the slogan which the Applicant was trying to register.
Finally, the TTAB determined that Applicant’s intent that the slogan should function as a mark was irrelevant to its analysis. “Mere intent that a term function as a trademark is not enough in and of itself, any more than attachment of the trademark symbol would be, to make a term a trademark.”
CONCLUSION
This decision underscores that matter must function as a trademark to be registrable, and that commonly used political slogans will likely be unregistrable as trademarks.
