The trend at the Trademark Trial and Appeal Board (TTAB, the Board) affirming refusals for failure-to-function as a trademark continued in 2020. For example, the TTAB issued the following precedential decisions refusing registration of commonly used phrases:
In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020): The TTAB upheld a refusal to register “TEAM JESUS” for clothing and educational and entertainment services, citing evidence that “TEAM JESUS” is commonly used to express an affiliation with Christianity. The Board noted that even when used in a non-ornamental fashion (on a label, hangtag or shirt collar, for example), the ubiquitous phrase did not function as a trademark.
In re Lee Greenwood, 2020 USPQ2d 11439 (TTAB 2020): Country music singer Lee Greenwood, well-known for his song “God Bless the USA,” was unsuccessful in his attempt to register “GOD BLESS THE USA” for use in connection with certain home goods. Finding it to be a commonly used phrase to express patriotism and American pride, the TTAB upheld the refusal, despite the applicant’s fame: “[E]ven if these consumers were familiar with the song and Applicant himself, they may not associate the household items identified in the involved application with Applicant or his song, when so many third parties offer household items bearing the same wording.”
In re Mayweather Promotions, LLC, 2020 USPQ2d 11298 (TTAB 2020): The TTAB refused famous boxer Floyd Mayweather Jr.’s company’s application to register “PAST PRESENT FUTURE” for use in connection with “t-shirts.” Noting that the test centers on the perception of the relevant public, the TTAB cited numerous third-party uses of “PAST PRESENT FUTURE” to demonstrate that this phrase is not widely recognized as an indication of source: “Even if Applicant had provided evidence that a small subgroup of t-shirt consumers who are fans of Mr. Mayweather associate the phrase with him, Applicant fails to grapple with the evidence of third-party use of the phrase on t-shirts that does not appear to be linked with Mr. Mayweather, which suggests that the broader class of t-shirt consumers would perceive only the common meaning of the phrase.”
The TTAB also addressed multiple failure-to-function refusals for trademarks consisting solely of a generic top-level domain (gTLD). The Trademark Manual of Examining Procedure (TMEP) § 1215.02(d) prohibits registration of these marks, except in the rare case where the applicant demonstrates that the gTLD has source-indicating significance. Nonetheless, the TTAB issued two precedential opinions affirming the refusal to register a gTLD mark for use in connection with registry operator services:
In re Vox Populi Registry Ltd., 2020 USPQ2d 11289 (TTAB 2020): The registry operator for the .sucks gTLD attempted to register “.SUCKS” for use in connection with domain registration and registry services. Clarifying that a prior registration for the gTLD (with or without the “dot”) in connection with related goods/services would be relevant, but—contrary to the Examining Attorney’s contention— not dispositive on the issue of failure-to-function, the TTAB nonetheless affirmed the refusal to register, finding that the evidence of record demonstrated that consumers viewed “.SUCKS” as a gTLD rather than as a trademark. As the TTAB noted, “.SUCKS is more akin to Applicant’s product, not its brand. When a table maker sells tables, the word ‘table’ is simply the common descriptive name of the table maker’s product; it cannot be the table maker’s brand.”
In re AC Webconnecting Holding BV, 2020 USPQ2d 11048 (TTAB 2020): In this case, the TTAB affirmed the refusal to register “.CAM” for use in connection with, inter alia, registry operator services on the Supplemental Register. Citing third-party evidence and evidence of Applicant’s own use of “.CAM,” the Board noted that the relevant consumers do not perceive the use of “.CAM” as a trademark: “There is no evidence that .CAM is perceived as anything other than a gTLD, and very little evidence that Applicant has used or promoted .CAM as a unique source identifier.”
The TTAB issued numerous precedential decisions this year affirming refusals to register for failure-to-function as a trademark. Moving forward, the Board is likely to continue in this vein, refusing registration where the evidence of record demonstrates that the relevant consumers do not recognize the applied-for mark as a trademark