In failure-to-function cases, the key question is how the alleged mark will be perceived by relevant consumers. To make this determination, the Board looks at the applicant’s specimens of use as well as marketplace evidence. The more commonly a phrase is used, the less likely it will serve as a source indicator. Moreover, terms that are merely informational in nature are generally not registrable. Here are two very recent decisions in what seems to have become a steady stream of failure-to-function cases.
In re Lisa Brewer Buffaloe, Serial No. 87880862 (September 18, 2019) [not precedential] (Opinion by Judge Elizabeth A. Dunn). The Board affirmed a refusal to register the alleged mark JOHN 15:11 PUBLICATIONS, finding that the phrase fails to function as a trademark for “Downloadable e-books, audio books, multimedia files, and electronic publications in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the bible verse John 15:11” and “Printed books in the field of literary works featuring inspirational and religious fiction and non-fiction, all of the foregoing not featuring the bible verse John 15:11”.

JOHN 15:11 refers to a well-known Biblical verse that states: “These things I have spoken to you so that My joy may be in you, and that your joy may be made full.” The evidence submitted by Examining Attorney Samuel R. Paquin demonstrated that this verse is the subject of inspirational and religious publications, sermons by religious leaders, and spiritual discussions, and is recognized by the public because it is encountered on a wide variety of items.

Based on this record, we are persuaded that public perception of the term JOHN 15:11 PUBLICATIONS is shaped by the ready availability of hundreds of JOHN 15:11 publications online as well as the recognition of the Bible verse JOHN 15:11 to the public, as shown by the broad market for goods from light switches to coasters bearing the verse. We find that JOHN 15:11 PUBLICATIONS as used by Applicant merely provides information about the identified goods, and is not perceived as indicating a single source for Applicant’s print and electronic religious and spiritual publications.

The fact that the phrase JOHN 15:11 is displayed in the manner of a trademark does not mean that the public perceives it as a trademark. Also, the addition of the word PUBLICATIONS (which is disclaimed) does not alter the significance of JOHN 15:11.

Note that the identified goods exclude publications “featuring the Bible verse John 15:11.” The Board declined to reach the issue of deceptive misdescriptiveness under Section 2(e)(1).

In re Scherr’s Cabinets & Doors, Inc., Serial No. 87685028 (September 18, 2019) [not precedential] (Opinion by Judge Thomas Shaw). The Board affirmed a failure-to-function refusal of CABINETS ASSEMBLED BY YOU for “cabinets being furniture for residential and commercial properties” [CABINETS disclaimed].

Examining Attorney Edward Fennessy submitted a number of Internet excerpts establishing that “assembled by you” is commonly used by manufacturers and retailers of cabinetry and furniture. Furthermore, excerpts from Applicant’s own website reinforced the informational meaning of the purported mark: for example, “Scherr’s Cabinets & Doors manufactures high-quality custom cabinet doors, dovetail drawer boxes, and cabinets-assembled-by-you.”

The addition of the word CABINETS to the common phrase ASSEMBLED BY YOU does not diminish the informational nature of the entire phrase.

Because consumers are accustomed to seeing ASSEMBLED BY YOU used by many different manufacturers and retailers of ready-to-assemble furniture and cabinets, they would not view the phrase CABINETS ASSEMBLED BY YOU as a trademark indicating that Applicant is the sole source of cabinets bearing the mark. Applicant is not entitled to appropriate the phrase to itself and thereby attempt to prevent competitors from using it to promote the sale of their own products.

Applicant argued that its specimens of use clearly show the phrase used as a trademark, with the TM symbol appearing after the phrase. The Board was unimpressed. “Submission of an otherwise acceptable specimen, such as a label, bearing the proposed mark will not obviate the refusal; the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark.”

And so the Board affirmed the refusal.

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TTABlog comment: Is either of these a WYHA?

Text Copyright John L. Welch 2019.