TMEP 1202.04: Informational Matter

This is the October 2015 Edition of the TMEP

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1202.04    Informational Matter

Slogans and other terms that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. See In re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (finding AOP merely informational and not source-identifying for wine as it informs consumers of a certification process);In re T.S. Designs, Inc., 95 USPQ2d 1669 (TTAB 2010) (holding CLOTHING FACTS merely an informational phrase and not a source identifier based on the likely consumer perception of the phrase used on a clothing label in connection with manufacturing information reminiscent of the "Nutrition Facts" label required for food products by the United States Food and Drug Administration); In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (holding SPECTRUM fails to function as a mark for illuminated pushbutton switches, where the mark is used in a manner that merely informs potential purchasers of the multiple color feature of the goods, and the coloring and font in which the mark is displayed are not sufficient to imbue the term with source-identifying significance or to set it apart from other informational wording); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998) (holding DRIVE SAFELY merely an informational phrase or slogan that would be perceived as an everyday, commonplace safety admonition that does not function as mark); In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (holding THINK GREEN and design for weatherstripping and paper products “merely an informational slogan devoid of trademark significance”); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (holding PROUDLY MADE IN USA, for electric shavers, merely an informational slogan that is incapable of functioning as a mark, notwithstanding use of letters “TM” in connection with prominent display of slogan on packages for the goods and claim of acquired distinctiveness); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (holding WATCH THAT CHILD for construction material merely informational and not registrable notwithstanding long use); In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (finding FRAGILE for labels and bumper stickers merely informational and devoid of any source-identifying function).

The critical inquiry in determining whether a slogan or term functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public. In re Eagle Crest, Inc. 96 USPQ 2d 1227, 1229-30 (TTAB 2010) (holding ONCE A MARINE, ALWAYS A MARINE to be an “old and familiar Marine expression…that should remain free for all to use”); see In re Phoseon Technology Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (noting the critical inquiry in determining whether a mark, as used on the specimen, 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).”). The more commonly a phrase is used in everyday parlance, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark. In re Eagle Crest, 96 USPQ2d at 1229-30 (noting that “‘[a]s a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights’ in common phrases or slogans.” (quoting J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §7.23 (4th ed. 2010))). 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 slogan used in connection with goods/services from many different sources, it is likely that consumers would not view the slogan as a source identifier for such goods/services. Id. at 1230.

Use of the TM notation in and of itself does not make an otherwise unregistrable term a trademark. In re Volvo Cars, 46 USPQ2d at 1461.

A slogan can function as a trademark if it is not merely descriptive and/or merely informational. See, e.g., Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970) (affirming the Board’s dismissal of an opposition to the registration of HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for hair coloring preparation since the evidence showed the slogan functioned as a mark); In re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (reversing the refusal to register where QUALITY THROUGH CRAFTSMANSHIP for radio equipment functioned as a mark). See TMEP §1202.03(f)(i) regarding ornamental slogans used on goods.

The statutory basis for refusal of trademark registration on the ground that the matter is merely informational is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, and, in the case of matter sought to be registered for services, §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127. The applicant cannot overcome a refusal of trademark registration issued 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 In re Eagle Crest, 96 USPQ2d at 1229 (noting that “[s]logans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable”). In support of the refusal, the examining attorney must provide evidence that the mark is a slogan or term incapable of being perceived as a trademark or service mark. This support may include evidence of decorative or informational use by other manufacturers on goods of a similar nature and evidence that the term or slogan is frequently used by parties in connection with the sale of their goods or services. See id. at 1230 (noting 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 the relatively common merchandising slogan WHY PAY MORE! does not function as a mark which identifies and distinguishes applicant’s services from others).

If a slogan or term comprises a mark that is merely informational, then by its very nature it would not be seen as an indicator of source. Accordingly, registration must be refused even if the specimen of record shows what would otherwise be acceptable trademark or service mark use. Similarly, if there is sufficient evidence to indicate that consumers are accustomed to seeing a slogan or term used in connection with the relevant goods/services from many different sources, registration should be refused in §1(b), §44, and §66(a) applications because the slogan or term would not be perceived as a mark. See In re Eagle Crest, 96 USPQ2d at 1230 (holding that because the function of a trademark is to identify a single commercial source for particular goods/services, if consumers are accustomed to seeing a slogan used in connection with goods/services from many different sources, it is likely that consumers would not view the slogan as a source identifier for such goods/services).

See TMEP §§1202.17(c)(i)(A) regarding informational universal symbols and 1301.02(a) regarding informational matter that does not function as a service mark.