The Board sustained an opposition to registration of the mark "I ♥ DC" in the form shown first below, for various clothing items, and ordered cancellation of a registration (on the Supplemental Register) for the same mark in the form shown second below, for backpacks, clothing, and stuffed toys, on the ground that the marks fail to function as trademarks. D.C. One Wholesaler, Inc. v. Jonathan E. Chien, Opposition No. 91199035 and Cancellation No. 92053919 (October 4, 2016) [not precedential].

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Standing: The parties are competitors in the business of selling "D.C. souvenirs" at wholesale, to retailers such as gift shops and street vendors. Plaintiff's principal testified that, because of certain advertising by defendant, tourists fear that its goods are illegal and are afraid to buy from plaintiff. That was sufficient to establish standing.

Failure to Function: Plaintiff argued that the phrase "I ♥ DC" is a common slogan used in an informational sense, and that consumers are accustomed to seeing the phrase on goods from multiple sources.

The evidence demonstrated that apparel bearing the phrase "I ♥ DC" is available from many sources. Other merchandise prominently displaying the phrase, such as mugs, teddy bears, aprons, etc., is also common. Plaintiff has offered such goods since at least 2005. A vendor testified that he saw similar merchandise since 2000 or 2001, and that this type of product "was probably one of our most popular items from the very beginning." He has purchased these goods from several different wholesalers.

Plaintiff also showed that designs consisting of "I ♥ " followed by other terms (RUGBY, KETCHUP, JESUS, etc.) are common in the souvenir industry. Plaintiff's expert opined that customers and tourists purchase the items because they like the design or the product itself and do not care where they originated.

Defendant testified that he did not create the design and that the logo "has been out since the '60s for anyone to use." "I ♥ DC" means "I love D.C., the District of Columbia." [Really? ed.]. Defendant acknowledged that the design is used by others. Some of defendant's products display the mark only on the hangtag and not on the product itself.

The Board concluded that the mark would not be perceived as an indicator of source for the goods on which it appears.

The record before us indicates that I ♥ DC has been widely used, over a long period of time and by a large number of merchandisers, as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C. This significance of the expression is reinforced by the fact that similar expressions in the form “I ♥__” have also been widely used to express such enthusiasms with respect to other places and things.

The Board noted that the souvenir marketplace is "awash" in products that display ""I ♥ DC"as a prominent ornamental feature. Consumers purchase the product because of this ornamentation, which appears as informational matter not associated with a particular source.

Defendant's use of the mark on hangtags, in a non-ornamental manner that is conventional for the display of trademarks, does not mandate a different outcome. The question is still whether the phrase functions as a trademark. Because of the informational nature and the ubiquity of the phrase, it does not convey source even when used on a hangtag.

And so the Board concluded that the two logos shown above do not function as trademarks for defendant's goods, and it sustained the opposition and granted the petition for cancellation.