BitLaw

1202.04    Informational Matter

Merely informational matter fails to function as a mark to indicate source and thus is not registrable because consumers would perceive such matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others. See, e.g., In re GO & Assocs., LLC, 90 F.4th 1354, 1356, 2024 USPQ2d 616, at *3 (Fed. Cir. 2024) (EVERYBODY VS RACISM for tote bags, apparel, and services involving promoting awareness of the need for racial reconciliation); In re Brunetti, 2022 USPQ2d 764, at *1-4 (TTAB 2022) (FUCK for various carrying cases; jewelry; sports and other carrying bags; and various retail, marketing, and advertising services for such consumer goods), appeal docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023); In re Greenwood, 2020 USPQ2d 11439 (TTAB 2020) (GOD BLESS THE USA for accent pillows, decorative centerpieces of wood, and decorative non-textile wall hangings); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016) (I ♥ DC for bags, clothing, plush toys); In re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (AOP for wine); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (ONCE A MARINE, ALWAYS A MARINE for clothing); In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTRUM for illuminated pushbutton switches); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE SAFELY for automobiles); In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design for weatherstripping and paper products); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material); In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (FRAGILE for labels and bumper stickers).

Matter may be merely informational and fail to function as a source indicator for various reasons, including one or more of the following:

• The matter merely conveys general information about the goods or services (see TMEP §1202.04(a)).
• The matter is a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources (see TMEP §1202.04(b)).
• The matter is a direct quotation, passage, or citation from a religious text used to communicate affiliation with, support for, or endorsement of, the ideals conveyed by the religious text (see TMEP §1202.04(c)).

Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. See In re GO & Assocs., LLC, 90 F.4th at 1356-1357, 2024 USPQ2d 616, at *3-4; In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020) (citing D.C. One Wholesaler, Inc., 120 USPQ2d at 1716); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019). Furthermore, the presence of the "TM" or "SM" symbol on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d at 1231); In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1461.

The critical inquiry in determining whether matter functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public—in other words, whether the evidence shows the proposed mark would be understood as a means to identify and distinguish the applicant’s goods or services from those of others. In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351, 2022 USPQ2d 115, at *2 (Fed. Cir. 2022) ("In analyzing whether a proposed mark functions as a source identifier, the Board focuses on consumer perception." (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020))); Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (citing In re Greenwood, 2020 USPQ2d 11439, at *2); In re DePorter, 129 USPQ2d 1298, 1303 (TTAB 2019) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229)); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (noting that the critical inquiry in determining whether a mark functions as a trademark is the "commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the goods or merely as an informational phrase)"); In re Remington Prods., Inc., 3 USPQ2d at 1715.

If there are no limitations on the goods or services in the application, the relevant consuming public comprises all potential purchasers of the goods or services. In re Team Jesus LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *5 (TTAB 2019)); see Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *3).

Additionally, designs that would be perceived as the equivalent of a word generally are not legally distinguishable from the word. In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (TTAB 2020) (citing Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 331, 137 USPQ 881, 883 (C.C.P.A. 1963); In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983)) (finding LOVE with a depiction of the Texas flag or a map of TEXAS was well-recognized as the wording TEXAS LOVE or LOVE TEXAS and would only be perceived by consumers as conveying the same widely recognized sentiment of showing pride and love for Texas). In informational matter cases, the form in which the term appears is "much less significant than the impression it conveys." Id. at *5 (citing D.C. One Wholesaler, Inc., 120 USPQ2d at 1716; In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986)). Furthermore, the Trademark Trial and Appeal Board has held that an accurate pictorial representation of a word can be informational and incapable of identifying the source of an applicant’s goods. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *5-6 (TTAB 2019) (holding an accurate pictorial representation of a crab simply informed prospective consumers that applicant’s product was crabmeat and reinforced the informational nature of the wording surrounding the image).

If a proposed mark is merely informational, an examining attorney must issue a failure-to-function refusal. If registration is sought on the Principal Register, the statutory basis for this refusal is Trademark Act §§1, 2, and 45, 15 U.S.C. §§1051 –1052, 1127, for trademarks, and §§1, 2, 3, and 45, 15 U.S.C. §§1051 –1053, 1127, for service marks. If registration is sought on the Supplemental Register, the statutory basis is §§23 and 45, 15 U.S.C. §§1091, 1127. In this case, an applicant cannot overcome the failure-to-function refusal on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). See TMEP §1202.04(d) regarding amending to the Supplemental Register or claiming §2(f) in response to a merely informational failure-to-function refusal.

If a proposed mark contains registrable matter, an examining attorney must require a disclaimer of the merely informational matter, unless the mark is unitary. See Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a), 1213.05. Merely informational matter may be deleted from the drawing if: (1) the deletion does not result in material alteration of the mark and does not change the mark’s overall commercial impression; (2) the matter to be deleted is separable from the other elements; and (3) the mark contains other registrable source-indicating matter. See TMEP §§807.14–807.14(a).

In support of the refusal or disclaimer requirement, the examining attorney must explain the basis for the refusal and provide evidence showing that the matter would not be perceived as a trademark or service mark that indicates a particular source of goods or services. This support may include evidence of decorative or informational use by applicant or other manufacturers with goods or services of a similar nature, or evidence of frequent use by others in connection with the sale of their own goods or services. See In re GO & Assocs., LLC, 90 F.4th at 1356-1357, 2024 USPQ2d 616, at *3; see, e.g., In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (noting that "the record includes many examples of third-party uses for goods that are the same as or similar to Applicant's identified goods" such that "[i]t is clear from how the term is used by multiple third parties that TEXAS LOVE merely conveys a well-recognized concept or sentiment, specifically love for or from Texas; the term does not identify the source of Applicant's goods"); In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (noting "the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources... ‘does not create the commercial impression of a source indicator’"; rather the "evidence as a whole shows that TEAM JESUS is a commonplace message of Christian affiliation"); In re Wal-Mart Stores, Inc., 129 USPQ2d at 1153-56 (noting third-party usage in several industries, such as in connection with products offered for sale and titles and texts of media and news articles, of the phrase INVESTING IN AMERICAN JOBS showed the public would perceive the phrase to "function not as a mark but instead as a merely informational expression of support for Amercian workers"); D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that "the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source"); In re Eagle Crest, Inc., 96 USPQ2d at 1230 (noting that, because consumers would be accustomed to seeing the phrase ONCE A MARINE, ALWAYS A MARINE "displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant"); In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (finding WHY PAY MORE! to be a common advertising slogan across a wide variety of goods and services and thus it failed to function as a service mark for supermarket services, relying on specimens that showed use of the slogan in phrases such as "Why pay more for groceries?" and "More meat for less. Why Pay More?").

Evidence of third-party use does not need to show commercial use of the proposed mark with goods or services to be probative of consumer perception, but must be competent to suggest that upon encountering the proposed mark, consumers would be unlikely to consider it as indicating the source of the applicant’s goods or services. In re DePorter, 129 USPQ2d at 1302 (finding social media tweets and posts probative to show widespread non-trademark use of #MAGICNUMBER108 to identify affiliation with the Chicago Cubs’ baseball team and their 2016 World Series win 108 years after their last one). As the critical focus of the refusal or disclaimer requirement is consumer perception, any evidence demonstrating widespread use of the matter in question is relevant to determining whether consumers would perceive the matter as a mark. In re DePorter, 129 USPQ2d at 1302 (citing TMEP §1202.04(b)). In addition, the evidence need not necessarily include third-party use in connection with the specific goods or services at issue to support the failure-to-function refusal. In re Black Card LLC, 2023 USPQ2d 1376, at *8 (TTAB 2023). However, where evidence of use in other contexts is included, the evidence must be sufficient to demonstrate that the matter in question conveys a single, common sentiment or meaning across a variety of goods or services such that consumers will view it as conveying that same sentiment or meaning regardless of the goods or services in connection with which it is used. Id. at *9.

Although the failure-to-function refusal is typically a specimen-based refusal, a refusal must be issued, regardless of the filing basis, if the evidence supports a determination that a proposed mark is merely informational and thus would not be perceived as an indicator of source. See TMEP §1202; In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *7 (finding an application for registration filed pursuant to §44(e) subject to the requirement that the applied-for mark function as a mark); In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting the propriety of and affirming a failure-to-function ornamentation refusal in a §66(a) application).

For an application where use has been alleged, registration must be refused even if the specimen of record shows technically acceptable evidence of use. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (quoting D.C. One Wholesaler, Inc., 120 USPQ2d at 1716) (finding the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources, did "not create the commercial impression of a source indicator, even when displayed on a hangtag or label").

See TMEP §1202 regarding use of subject matter as a trademark, §1202.04(d) regarding response options to a merely informational failure-to-function refusal, and §1301.02(a) regarding informational matter that does not function as a service mark.