The CAFC recently gave its imprimatur to the Board's "failure-to-function" jurisprudence in In re Go & Assocs., LLC, 90 F.4th 1354, 2023 USPQ2d 1337 (Fed. Cir. 2024). That opinion had originally been deemed nonprecedential, but at the USPTO's request, the court re-designated it as precedential. The CAFC there, in a case involving a failure-to-function refusal of the phrase EVERBODY VS RACISM, said:
The [Trademark] Act conditions the registrability of any mark on its ability to distinguish an applicant’s goods and services from those of others. See 15 U.S.C. §§ 1052, 1053. In other words, it is a threshold requirement of registrability that the mark “identify and distinguish” the goods and services of the applicant from those of others, as well as “indicate the source” of those goods and services.
The question, then, was whether WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! functions as a mark based on whether the relevant public, i.e. purchasers or potential purchasers of the recited legal services, would perceive the phrase as identifying the source or origin of Attorney Russell's services. Here, "the relevant consuming public comprises all potential purchasers of the identified legal services, and therefore includes members of the general public."
In In re Vox Populi Registry Ltd., 25 F.4th 1348, 2022 USPQ2d 115, at *3 (Fed. Cir. 2022), the appellate court "noted the Board’s holding that 'matter that 'merely convey[s] general information about the goods or services or an informational message' fails to function as a source identifier.'"
Here, Examining Attorney Justine Levy contended that the proposed mark "fails to function as a trademark because the wording is merely informational and constitutes a commonplace slogan." She relied on a Thomson Reuters’ Legal online article referring to "clients' legal needs" in connection with legal services, along with third-party law firms' uses of the wording in the proposed mark, or nearly identical wording.
Applicant Russell characterized the third-party uses as merely a “handful” of examples, and he asserted that "[s]uch minimal results are insufficient to establish that the applied-for mark is 'ordinary.'" He also argued that because the third-party uses are 'on interior web pages' or relatively less prominent than other wording or graphics, this diminished their probative value. The Board was unimpressed.
We find the quantity and quality of examples – which fall squarely within the context of Applicant’s recited legal services and which reflect a consistent meaning – persuasive to show the informational nature of the wording.
As for the less prominent usage by third-parties, the Board deemed such usage to align with, rather than detract from, the informational significance of WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS!
Applicant’s specimen is consistent with the informational nature of the proposed mark, as we find that consumers would view the much larger and more prominent wording RUSSELL LAW FIRM as the source of the services, and would understand WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! to convey the availability (WE’RE HERE) to perform the legal services the consumer viewing the specimen might require (TO HELP WITH YOUR LEGAL NEEDS).
And so, the Board affirmed the refusal under Sections 1, 2, 3 and 45 of the Trademark Act.
Read comments and post your comment here.
TTABlogger comment: WYHA?
Text Copyright John L. Welch 2024.
