TTABlog Test: How Did These Three Failure-to-Function Appeals Turn Out?

It seems that failure-to-function refusals are increasing in frequency. Just in the last few days,the Board issued decisions in three such cases. Are trademark applicant’s overreaching? Have people come to think that if they are first to file they will “own” the phrase or term? Anyway, let’s see how you function as a TTAB judge. [Answers in first comment].

In re Nancy D. Greene, Serial No. 87830154 (November 18, 2020) [not precedential] (Opinion by Judge Thomas Shaw, dissent by Judge Cindy B. Greenbaum). [Refusal to register the term LEGAL LANDMINES on the Supplemental Register, on the ground of failure to function as a service mark for business coaching and educational services. The Examining Attorney argued that the phrase is ““a commonplace term, message, or expression widely used by a variety of sources in the applicant’s field that merely conveys an ordinary, familiar, well-recognized concept or sentiment, namely, that the provided coaching and educational services are for assisting businesses in avoiding concealed yet incipient crises relating to the law.”]

In re Donald E. Moriarty, Serial No. 86367823 (November 23, 2020) [not precedential] (Opinion by Judge Thomas Shaw). [Failure-to-function refusal of WORST MOVIE EVER! for “parody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films.” The Examining Attorney maintained that the term “is merely a commonplace slogan used by a variety of sources and merely conveys an ordinary, familiar or well recognized concept or sentiment, that is, ‘[t]he applied-for mark conveys the ordinary and well recognized concept that the movie in question is the most wanting in quality, value or condition of all time.'”]

In re PIF Group LLC, Serial No. 88084519 (November 23, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Refusal to register the proposed mark SHE KNEW SHE COULD on the ground that the phrase fails to function as a trademark for a various goods in classes 14, 16, 18, 21, 25, and 28, including jewelry, blank journals, beach bags, drinking glasses, clothing, and playing cards. The Examining Attorney asserted that use of SHE KNEW SHE COULD “convey[s] the ordinary, familiar, well-recognized sentiment of female empowerment or affirmation [and] is consistent with the plain meaning of the wording that comprises the expression. … [A] female is aware that she is able.”].

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TTABlogger comment: See any WYHA?s here?