1202.04 Informational Matter
Merely informational matter fails to function as a mark to indicate source and thus is not registrable. See, e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (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 is merely informational and does not function as a mark when, based on its nature and the context of its use by the applicant and/or others in the marketplace, consumers would perceive it 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/services from those of others.
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. In re Eagle Crest, Inc., 96 USPQ2d at 1230. Furthermore, the mere use of the "TM" or "SM" notation, in and of itself, cannot transform an unregistrable term into a trademark or service mark. See In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1461 (TTAB 1998).
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. See D.C. One Wholesaler, Inc., 120 USPQ2d at 1713; 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 Eagle Crest, Inc., 96 USPQ2d at 1229; In re Remington Prods., Inc., 3 USPQ2d at 1715.
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).
If a proposed mark is merely informational, a failure-to-function refusal must issue. If registration is sought on the Principal Register, the statutory basis for this refusal is §§1, 2, and 45 of the Trademark Act, 15 U.S.C §§1051, 1052, and 1127, for trademarks, and §§1, 2, 3, and 45, 15 U.S.C. §§1051, 1052, 1053, and 1127, for service marks. If registration is sought on the Supplemental Register, the statutory basis is §§23 and 45, 15 U.S.C. §§1052 and 1127. Note that an applicant cannot overcome a 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 in response to a merely informational failure-to-function refusal.
If a proposed mark contains registrable matter, a disclaimer of the merely informational matter must be required, unless the mark is unitary. See Trademark Act 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 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 on goods of a similar nature, or evidence of frequent use by others in connection with the sale of their own goods or services. See, e.g., 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 C.R. Anthony Co., 3 USPQ2d 1894, 1895 (TTAB 1987) (noting that "in every exhibit submitted by applicant to illustrate use of ‘PART OF THE BARGAIN’, that four-word phrase, whether written small or large, forms part of a longer sentence or phrase"); 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?").
Although the failure-to-function refusal is normally 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; cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, "it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark").
For an application where use has been alleged, registration must be refused even if the specimen of record shows technically acceptable evidence of use. D.C. One Wholesaler, Inc., 120 USPQ at 1716 ("Because the nature of the phrase [I ♥ DC] will be perceived as informational, and also because the ubiquity of the phrase... on apparel and other souvenirs of many makers has given it a significance as an expression of enthusiasm, it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label.").