March 24, 2023
Law360
By Margaret A. Esquenet; Lisa Peller London
Spring is in the air and so too are failure-to-function refusals at the U.S. Patent and Trademark Office.
Following on the heels of two recent and instructive failure-to-function decisions from the Trademark Trial and Appeal Board, the USPTO will offer an advanced practitioner's training webinar called "Overview of Common Failure-to-Function Refusals" on March 28.[1]
The failure-to-function issue deserves attention. Social media allows pop culture to travel at the speed of light. Just as quickly, efforts to monetize pop culture references flood the USPTO with applications seeking trademark protection for colloquialisms, song lyrics, catchphrases and the lingo of the moment. These applicants often get stopped short, however, by a failure-to-function refusal.
The USPTO's decision to aim its training webinar at advanced practitioners highlights the need to pay heed to the failure-to-function issue, and the TTAB's recent rulings provide a road map of how to overcome a failure-to-function refusal, if not avoid the issuance of such a refusal from the start.
Trademark counsel must consider not just their clients' intent in adopting a slogan, saying or catchphrase, but how the wider world perceives and uses that slogan, saying or catchphrase, and be prepared to demonstrate the transformation of the phrase from something common to something source-identifying.
The genesis of the failure-to-function refusal can be found in Section 2(e) of the Lanham Act, which prohibits the registration of a mark that "comprises any matter that, as a whole, is functional."[2]
The USPTO's Trademark Manual of Examining Procedure expands on that statutory prohibition, defining functional terms as
matter that merely conveys ordinary, familiar, or generally understood concepts or sentiments, as well as social, political, religious, or similar informational messages in common use, [that] would not be perceived as indicating source and thus is not registrable.[3]
Significantly, public perception, rather than a trademark applicant's intent, determines whether a phrase or slogan accomplishes the purpose of being source-identifying and qualifying as a registrable trademark.[4]
An informal survey of failure-to-function refusals casts doubt on whether an applicant ever realistically expected to be able to claim exclusive rights in the phrase it sought to register.
In this category are the USPTO failure-to-function refusals issued against applications seeking to register "drive safely" for automobiles; "why pay more!"; "I ♥ DC"; and "proudly made in the USA."[5] In each application, the USPTO determined that consumers would perceive the phrase as merely informational or an everyday expression, and so refused registration.
Applicants strongly connected to a particular phrase have had better success at avoiding or overcoming a failure-to-function refusal at the USPTO. Taylor Swift in particular has enjoyed great success in securing federal registrations for trademarks that comprise song titles and lyrics, and identify not only entertainment services and musical sound recordings, but also merchandise such as clothing.
In less famous hands, the following actively registered trademarks might have been refused registration on failure-to-function grounds:
The U.S. Marine Corps used a related tactic to eventually overcome a failure-to-function refusal. Specifically, the U.S. Marine Corps' "Once a Marine, Always a Marine" slogan was initially refused registration for clothing, bumper stickers and decals, cloth patches, and license plate frames.[7]
Five years after these failure-to-function refusals, however, the Marine Corps successfully registered the identical slogan for metal license plates.[8]
That registration claimed acquired distinctiveness under Section 2(f), which raises the possibility that a once-informational slogan may become sufficiently exclusively associated with an applicant such that it has enough secondary meaning to serve as trademark.
Two recent Trademark Trial and Appeal Board decisions on whether a particular phrase can serve a source-identifying function reached differing outcomes, highlighting the nature of a failure-to-function refusal and what applicants face when they try to claim a popular saying as their own exclusive right.
Landing in the win column is music superstar Lizzo. Shortly after being awarded Record of the Year at the 2023 Grammy Awards for her smash hit "About Damn Time," Lizzo's trademark holding company secured a rare reversal from the TTAB last month, overcoming a failure-to-function refusal for her pending applications to register the phrase "100% That Bitch."[9]
Lizzo LLC filed two applications seeking to register the phrase for apparel, a mark inspired by a lyric in one of Lizzo's most well-known songs, "Truth Hurts."
In refusing registration, the examining attorney argued that the phrase was "a commonplace term, message or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment," and thus failed to function as a trademark.[10]
As with most failure-to-function refusals, Lizzo's case turned on the evidence of record regarding third-party use of the expression "100% That Bitch."
In support of refusal, the examining attorney relied upon website evidence submitted to the USPTO in a letter of protest, screenshots from additional websites selling apparel and other merchandise making primarily ornamental use of the phrase "100% That Bitch," and an urbandictionary.com entry.
The examining attorney also argued that "Lizzo did not originate the phrase '100% That Bitch' but merely popularized it," pointing to Lizzo's acknowledgment that the phrase was a derivation of the popular phrase "that bitch," and Lizzo's decision to give writing credit to the party who authored the Tweet that inspired a meme that, in turn, inspired Lizzo to include the line "100% That Bitch" in her hit song.
Countering the examining attorney, Lizzo pointed to the following to demonstrate that consumers associate "100% That Bitch" with Lizzo and that it is not merely a common expression:
The TTAB agreed with Lizzo, concluding that the examining attorney's evidence did not demonstrate that the phrase "100% That Bitch" was "used in general parlance or that it conveys a common social, political, patriotic, religious, or other informational message."
Central to the TTAB's decision was its finding that there was no evidence of widespread use of the phrase over a long period of time by many users before Lizzo popularized it.
That finding, coupled with Lizzo's successful enforcement efforts and third-party use that specifically sought to associate goods bearing the phrase with Lizzo and her music, ultimately persuaded the TTAB to find that "100% That Bitch" is not, in fact, a commonplace expression but instead is entitled to registration on the Principal Register.
Contrasting with Lizzo's success, D2K IP — the applicant seeking to register the mark "Have a Great Day" for "cups; coffee cups; insulating sleeve holder for beverage cups; insulating sleeve holders made of paper or cardboard for jars, bottles or cans" — failed to convince the TTAB earlier this month that the phrase could serve a trademark function.[11]
In support of the refusal to register, the USPTO examining attorney argued that "Have a Great Day" is a "commonplace message, nearly ubiquitous in our culture."[12]
They presented evidence from websites such as eBay and Etsy that sell merchandise bearing the phrase; articles on marketing and business strategy advising on the use of the phrase; a Wikipedia article on the expression "Have a Nice Day" and variations of that phrase, which detailed the phrases' common use in business; and similar online materials that either included the phrase or discussed its ubiquity.
The applicant countered that most of the examining attorney's evidence did not show use of the phrase "Have a Great Day" on goods identical or related to those set out in the application.
The TTAB found this defense unpersuasive, concluding that:
Similarly unpersuasive was the applicant's evidence that the USPTO had already registered the identical mark for entertainment services and granted registration for other marks highly similar in appearance and meaning and identifying a wide range of goods and services, including apparel and mugs, which are the type of merchandise, like the applicant's coffee cups, that often display slogans and phrases ornamentally.
Examples included: "Have the Best Day Ever," "Have a Good Day," "It's a Great Day," "What a Great Day!" and "Make it a Great Day" for a wide variety of goods and services. Thus, the TTAB upheld the examining attorney's failure-to-function objection and refused registration of "Have a Great Day" for the applicant's goods.
The seeming inconsistency in when the USPTO will raise a failure-to-function refusal reflects the heavily fact-specific nature of trademark use and trademark registration practice.
Both the Lizzo and D2K IP cases involved evidence of widespread third-party use of the phrases at issue but the strong connection between most of the third-party uses of "100% That Bitch" and Lizzo and her song transformed that third-party evidence from proof of common use to proof of source identification.
Trademark counsel can use these tips below to avoid failure-to-function refusals:
[1] Information about the USPTO webinar may be found here: https://www.uspto.gov/about-us/events/overview-common-failure-function-refusals?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=
[2] 15 U.S.C. §1052(e).
[3] Trademark Manual of Examining Procedure § 1202.04(b) (July 2022).
[4] In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993) ("Mere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark."). See also In re Greenwood, 2020 USPQ2d 11439, at *2 (TTAB 2020) ("The critical inquiry in determining whether a proposed mark functions as a trademark is how the relevant public perceives it.").
[5] In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE SAFELY); In re Wakenferm Food Corp., 222 USPQ 76 (TTAB 1984) (WHY PAY MORE!); D.C. One Wholesaler, Inc. v. Jonathan E. Chien, 120 USPQ2d 1710 (TTAB 2016) (I ♥ DC); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN THE USA).
[6] U.S. Trademark Reg. Nos. 5770375; 5643707; 5186873; 5186872; 5770429; 5124813; 5191637; and 5124811.
[7] In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010) (ONCE A MARINE ALWAYS A MARINE).
[8] U.S. Trademark Reg. No. 6169456.
[9] In re Lizzo LLC, 23 USPQ2d 139 (TTAB 2023) (precedential).
[10] Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.
[11] In re D2K IP, Serial No. 90471186 (TTAB March 2, 2023) (not precedential).
[12] Id. at *5.
[13] Id. at *10 (emphasis added) (citing Examining Attorney's Brief).
Originally printed in Law360 on March 24, 2023. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients.
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