A trademark or service mark which includes any word, name, symbol, device, or any combination “must” identify and distinguish the goods … from those manufactured or sold by others and … indicate the source of the goods, even if that source is unknown.

Hence, a proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services.

A commonplace message or expression. . . that merely conveys an ordinary, familiar, well-recognized sentiment may never function as trademark. That use of a designation or a phrase to convey advertising or promotional information, rather than that to indicate source, is not trademark use. Common laudatory statements ordinarily used in business or a particular trade are not registrable.

“A critical element in determining whether a term or phrase is a trademark is the impression the term or phrase makes on the relevant public.”  “[E]vidence of the public’s perception may be obtained from ‘any competent source, such as consumer surveys, dictionaries, newspapers and other publications.”

Recent examples showcase how the US Trademark Trial and Appeal Board (TTAB) decides on those cases.

The TTAB sustained the University of Kentucky’s opposition to registration of the proposed mark “40-0” for t-shirts, finding that the term is a widely used, common expression that fails to function as a trademark.

In the college basketball arena, NCAA, “40-0” is a term used to convey the concept of a perfect basketball season concluding with a national championship.

The TTAB sided with the USPTO by sustaining the University of Kentucky’s opposition indicating that “Applicant’s use of the term on its social media sites is informational, indicating historical or aspirational perfect basketball seasons, not the source of the T-shirts”.

Same fate resulted for boxing champion Floyd Mayweather, Jr., application to register the mark “PAST PRESENT FUTURE” for “T-shirts.” The TTAB affirmed the refusal to register issued by the Examining Attorney by stating that the proposed trademark “would be perceived by purchasers and prospective purchasers as a widely used commonplace expression of a familiar concept and not as a source indicator for t-shirts.”

The Board further reasoned that “[C]ontrary to Applicant’s contentions, the weight of the evidence does demonstrate ubiquitous third-party use of the phrase “PAST PRESENT FUTURE” to refer to the past, present and future of people, things, ideas and concepts”.

Similar fate suffered these trademark applications “BORN IN THE USA” for “bottoms as clothing; footwear; headwear; tops as clothing, “LEGAL LANDMINES” for business coaching and educational services, “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 NEXT MOVE IS YOURS” for “real estate agency services, real estate brokerage, real estate management, leasing of real estate, and “SHE KNEW SHE COULD” a variety of goods, including jewelry, blank journals, beach bags, drinking glasses, clothing, and playing cards.

On the other hand, on an appeal against a refusal to register the phrase “SAY YES TO WHAT’S NEXT” for clothing, religious books, and “Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of women aging and how to improve quality of life in the last quarter of life.” The TTAB sided with Applicant and reversed the refusal to register.

The TTAB indicated that “In this case, the Examining Attorney’s evidence does not rise to the level of demonstrating that use of “say yes to what’s next” is so common or widespread that the consuming public would view it as a common place expression or sentiment.”

Similarly, the TTAB reversed the refusal to register of “JUST ANOTHER DAY IN PARADISE” for a variety of products such as candles, flatware, lamps, and Christmas ornaments. The TTAB reasoned that the evidence submitted by the Examiner  failed to show that the proposed mark “is a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark.”

I have helped countless business navigate the intricacies of trademark and copyright law to secure for commonplace expressions . I’d like to help you too, also by protecting your rights to trademarks, copyrights, and other intellectual property rights in the US and overseas.

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