The Board affirmed a refusal to register the mark shown immediately below on the ground that it fails to function as a service mark for “Retail store services featuring handmade artisan products in the nature of original artwork in a wide variety of mediums; online retail store services featuring handmade artisan products in the nature of artwork in a wide variety of mediums.” The Board concluded that the proposed mark “will be perceived by customers as … merely a slight variation of [a] common phrase expressing support that, more specifically, indicates an affinity for the city of Pittsburgh arts community. In re The Artsmiths, LLC, Serial No. 8715177 (June 17, 2019) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board observed that “not every word or symbol which appears in connection with an entity’s services functions as a services mark.” The question is whether the phrase identifies the source of the services or whether it would be perceived merely as communicating the ordinary meaning of the words to consumers. See In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019) (INVESTING IN AMERICAN JOBS found to be a merely information phrase).

Examining Attorney April Reeves asserted that consumers are accustomed to “I [heart] PGH”  and “PGH ART” being used in everyday speech, and therefore they would perceive the phrase not as a trademark but as an informational message expressing support for the Pittsburgh art scene. She submitted evidence of third party use of “I [a heart shape] PGH,” and evidence that Pittsburgh has a known art scene.

The Board found that the evidence “clearly shows that uses of ‘I [heart-shape design] PGH’ will be clearly understood as an expression of support for the city of Pittsburgh.” The record evidence further showed that Pittsburgh has a thriving arts community, referred to by third parties as “PGH Art(s).”

Applicant Artsmiths argued that there was no evidence of third-party use of  “I [heart] PGH ART” or “I [heart] Pittsburgh Art.” The Board, however, pointed out that this is not determinative of how the public will perceive the phrase.

The evidence shows that “I [heart] PGH” is a fairly common phrase that will be immediately understood as merely expressing an affinity for the city of Pittsburgh. The addition of ART to this phrase merely extends or narrows this expression of support to the Pittsburgh art scene. The evidence also shows Pittsburgh has a celebrated arts community that is sometimes referred to as “PGH ART(S)” – thus the phrase “I [heart] PGH ART” will be perceived as a pronouncement of admiration for that community. In the context of Applicant’s retail store services featuring the sale of handmade artwork that includes works from artisans of Pittsburgh, consumers’ previous exposure to “I [heart] PGH” and “PGH ART(S)” will predispose them to viewing the proposed mark “I [heart] PGH ARTS” as merely an expression of the store’s support for the Pittsburgh arts community.

The Board concluded that Applicant’s specimen of use of the proposed mark (below) enhanced the likelihood that the logo would be perceived as merely informational because the logo is “removed from the description of applicant’s retail services and more closely associated with written matter that gives information about the arts and cultural center as a whole.” The Board agreed with Examining Attorney April Reeves that consumers would view the logo as a message of enthusiasm for Pittsburgh arts and artists.

Finally, the Board noted applicant’s reliance on 29 third-party registrations for marks containing the “I [heart]” term with additional matter. Many of the marks contained additional matter, like a design of a hot dog. More than half of the registrations involve the mark “I [heart] NY” and are owned by New York State. The Board was unmoved, once again pointing out that each case must be decided on its own facts and record, and the Board is not bound by the decisions of examining attorneys on different records.

And so the Board affirmed the refusal.

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TTABlog comment: I guess the State of New York was fortunate to get its registrations before the USPTO went on the warpath with its failure-to-function refusals. So forget about trying to register “I [heart] TTAB.”

Text Copyright John L. Welch 2019.