The Board observed that the CAFC and its predecessor, the CCPA, as well as other federal courts, “draw a distinction between words used to ‘identify and distinguish’ source, and words used in their ordinarily-understood meaning to convey information other than source-identification.” For example, DRIVE SAFELY, THINK GREEN, and YOU HAVE MAIL were deemed unregistrable as trademarks.
A critical question is “whether the phrase sought to be registered would be perceived as a mark identifying the source of the services, or as something else.” See, e.g., D.C. One Wholesaler v. Chien, 120 USPQ2d at 1713. In making this determination, the Board reviews the specimens and other evidence that shows how the purported mark is used in the marketplace.
Looking first to Wal-Mart’s own use of the phrase, its specimen of use (displayed above) appears on a shelf-talker in close proximity to products that are made by American workers. The phrase also appears on a web page with that phrase as the title, the web page stating “We believe we can create more American jobs by supporting more American manufacturing.”
The slogan INVESTING IN AMERICAN JOBS is like other statements that would ordinarily be used in business or industry, or by certain segments of the public generally, to convey support for American-made goods, and thus would not be recognized as indicating source and are not registrable. (citing cases).
The Board therefore found that the applied-for mark would be perceived by consumers as merely an informational statement that Wal-Mart is selling certain goods that are made or assembled in America, and it would not be perceived as a service mark.
Although the Board deemed the evidence of Wal-Mart’s usage to be sufficient to establish that the phrase does not function as a mark, the Board also considered use of the phrase by third parties. Examining Attorney Barbara Brown submitted many examples of third-party usage showing that “investing in American jobs” is commonly used in several industries to convey the same general idea (supporting American jobs) as does Wal-Mart. This evidence further demonstrated the public perception of the phrase as merely informational.
Wal-Mart pointed to search engine results, advertising expenditures of more than $10 million, attendance by 5,700 people at promotional events featuring the slogan, and more than 300,000 visits at its website, as evidence that the phrase is recognized as a mark. Wal-Mart also criticized the USPTO’s evidence as failing to show how many visits the third-party websites offered in evidence had received. The Board was unimpressed.
[T]here is no requirement that the Examining Attorney establish that a particular online source or website “has significant web traffic” to establish its competence, just as with print articles, the Examining Attorney need not establish the circulation of the magazine or newspaper or that the cited article has actually been read. *** Even websites that are not frequently visited still demonstrate how the authors use the term or phrase and how that term or phase will be perceived by the readers.
The Board found that the third-party evidence “shows common usage of the phrase ‘investing in American jobs’ by commercial businesses in various industries, as well as in media articles and blogs, to convey the goal or aim of investing in U.S. business to promote employment opportunities in America.”
None of Wal-Mart’s evidence demonstrated that the applied-for mark serves as a source indicator. The number of searches and the ranking in search results reveal nothing about the impression that the phrase makes on consumers. The evidence of promotional expenditures, attendance at events, and website traffic statistics “fares no better.”
In sum, the USPTO’s third-party evidence supported the Board’s conclusion that consumers will not perceive the applied-for mark as an indicator of a single source for the identified services. “Rather, consumers will perceive the words merely as conveying the common, informational message that Applicant, like others, promotes American-made goods by investing in American jobs.”
The Board therefore affirmed the refusal to register under Sections 1, 2, 3, and 45 of the Lanham Act.
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TTABlog comment: I wonder what percentage of the goods sold at Wal-Mart are made in America?
Text Copyright John L. Welch 2019.