Failure-to-Function: Although applicant used the phrase in the manner of a trademark by displaying it in proximity to the hats and shirts offered at its website, the Board observed that “[n]ot every word, name, phrase, symbol or design, or combination thereof which appears on a product functions as a trademark,” and “[m]ere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark.” In re Pro Line Corp. Corp., 2 8 USPQ2d 1141, 1142 (TTAB 1993); see also In re TracFone Wireless, 2019 USPQ2d 222983 at *1 ; In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019) (“The mere fact that a phrase proposed for registration appears on the specimens of record does not establish its use as a service mark.”).
Here, third-party evidence submitted by Examining Attorney Laura Gorman Kovalsky “reveals that TEXAS LOVE does not perform the desired trade mark function and does not fall within the Act’s definition of a mark, … but instead as a widely used phrase that merely conveys a well recognized and commonly expressed concept or sentiment.” The Board found that this evidence reflected use of the phrase “in a manner that will only be perceived by consumers as conveying support for, or affiliation or affinity with the State of Texas, a well-recognized sentiment.” [internal quotation omitted].
The Board found this case “closely analogous” to D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) [TTABlogged here], in which the Board sustained an opposition to registration of the phrase I ♥ DC for t shirts, hats and related products, There, the mark “conveys a message of love for Washington, D.C., just as Applicant’s proposed mark TEXAS LOVE conveys a message of love for or from Texas.”
Thus, as shown by this case and D.C. One Wholesaler, some widely used messages are primarily understood as an expression of enthusiasm or affection for, or affiliation with, a person, place or thing and when that is how consumers perceive them they are not functioning as terms or symbols that identify and distinguish goods or services in commerce and indicate their source. Here, because the evidence shows that TEXAS LOVE is an expression of a well recognized sentiment, specifically, enthusiasm and support for or from Texas or Texans, and would be perceived as such when used on Applicant’s identified goods, it does not function as a mark for those goods.
Not only is TEXAS LOVE a well recognized sentiment, but the evidence “makes clear that TEXAS LOVE, in various forms, is widely used by Applicant’s competitors in the clothing field and other third parties. Such widely used phrases often fail to function as trade marks.” See, e.g., In re Wal-Mart, 129 USPQ2d at 1153 (“widespread third party use of a phrase makes it less likely that the public will perceive it as identifying a single commercial source and less likely that it will be recognized by purchasers as a trademark”). The Board emphasized that widespread use of a phrase, regardless of the message conveyed, may be enough to render it incapable of serving as a source indicator.
In short, the evidence shows that the phrase TEXAS LOVE is too commonly used in connection with a wide variety of goods that typically carry such messages for it to be perceived as a trade mark, and Applicant should not be able to deny potential competitors (who according to the record also use the phrase) the right to use it freely.
Equal Protection: The Fifteenth Amendment to the U.S. Constitution states: “nor shall any State … deny to any person within its jurisdiction the equal protection o f the laws.” Applicant maintained that the USPTO treats Texas citizens like itself differently from those of Florida, California, Nevada, Maine and Hawaii in “contextually identical” situations. This proposition was based on the fact that citizens of those states received registrations for the following mark, respectively: FLORIDA LOVE, CALIFORNIA LOVE, VERONA LOVE, BURMA LOVE, SOUTHERN LOVE, EAST COAST LOVE, and WAIKIKI LOVE. [Reminds me of a Beach Boys song – ed.]
The Board found that applicant’s argument lacked both factual and legal support. Applicant provided no evidence that the USPTO treats citizens of Texas differently than those of other states. There was no evidence as to how the other marks were used, whether there was third-party use on the same or similar goods, what meanings were conveyed by the marks, or how extensively the marks were used. “[W]ithout that information, there is no support for Applicant’s contention that the refusal of its application was rendered in a situation that is ‘contextually identical’ to the circumstances leading to the allowance of these other registrations.” As the Supreme Court has pointed out, ‘[t]he Constitution does not require things which are different in fact or opinion to be treated in law as though they were the same.” Plyler, 457 U.S. at 216 (quoting Tigner v. Texas, 310 U.S. 141, 147 (1940)).
Moreover, the CAFC has made clear that such an Equal Protection argument is untenable. For example, in In re Shinnecock Smoke Shop, 91 USPQ2d at 1221, the court explained that:
[A]llegations of disparate treatment, even if accurate, do not diminish the Board’s and Examining Attorney’s legitimate, nondiscriminatory reasons for denying registration. Even if his allegations were accurate, the most Applicant could establish is that the USPTO should have rejected the other marks. It does not follow that the proper remedy for such mischief is to grant Applicant’s marks in contravention of section 1052(a). See also Int l Flavors & Fragrances Inc. Inc., 183 F.3d 1361, 51 USPQ2d 1513 , 1518 (Fed. Cir. 1999) (“Furthermore, IFF was not denied equal protection. Each application for trademark registration must be considered on its own merits.”).
Because the evidence of record shows that TEXAS LOVE only serves as an express ion of a concept or sentiment, and is widely used by third parties , it would not be perceived as an indicator of source in the context of Applicant’s identified goods. TEXAS LOVE thus fails to function as a trade mark under Sections 1, 2 and 45 of the Trade mark Act. 15 U.S.C. §§ 1051 1052 , 1127 . The Office’s registration of allegedly analogous third party marks is irrelevant, and the Constitution ’s equal protection clause does not support a different result.
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TTABlogger comment: This is the first of three precedential failure-to-function refusals issued by the Board on the same day.
Text Copyright John L. Welch 2020.