The Board reversed four failure-to-function refusals of the mark RANDOM ACTS OF KINDNESS, in the special form shown below, for goods and services relating to the promotion and encouragement of the “doing of good deeds for others.” The examining attorney maintained that the subject phrase is “merely informational and constitutes a widely used common slogan” that does not indicate source. The Board, however, pointed to applicant’s eleven existing registrations for the phrase or variations thereof, and found this departure from the USPTO’s prior position to be inexplicable and unacceptable. In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 87245971, 87245973, and 87245975 (February 15, 2018) [not precedential] (Opinion by Judge Angela Lykos).

The examining attorney relied upon excerpts from various websites encouraging people to perform good deeds, charitable activities, and acts of compassion, as well as on articles regarding altruism. Applicant argued that its previously registered marks, all on the Principal Register, preclude a finding that the applied-for marks fail to function as source indicators. In response, the examining attorney cited In re Nett Designs, Inc.,  57 USPQ2d 1564, 1566 (Fed. Cir. 2001), for the principle that each case must be decided on its own facts, and that the Board is not bound by prior decisions of examining attorneys in other cases.

The Board observed that it was faced with a “unique situation.” Each of Applicant’s eleven prior registrations issued on the Principal Register and is entitled to a presumption of validity under Section 7(b). The marks of the prior registrations either constitute or incorporate the same phrase at issue. Six of the registrations are more than five years old, and the remaining five issued from applications filed on the same day as the four applications here at issue. None include a disclaimer of the phrase.

The Examining Attorney’s refusals thus constitute a departure from the Office’s prior position. * * * There is no evidence, or even argument, to suggest that the alleged incapability of this phrase to identify source could not have been discerned at the time any of the prior registrations were examined. The same types of evidence the Examining Attorney now relies on was previously available. Furthermore, the Office offers no reason for its inconsistent treatment of the five registrations which recently issued that were filed on the same day as the four applications before us. In light of these unusual circumstances, we are compelled to reverse the Examining Attorney’s refusals. To find otherwise would result in inconsistent examination.

And so the Board reversed the refusals.

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Text Copyright John L. Welch 2019.