MarkIt to Market® - November 2020: Paradise Found – TTAB Reverses a Failure-to-Function Refusal

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Trademark practitioners were pleasantly surprised this month when the Trademark Trial and Appeal Board issued a rare reversal of a “failure-to-function” refusal, which has become an increasingly more common hurdle for trademark applicants to overcome on the road to federal registration. However, the case law on this issue remains muddled, and there is still little clarity on effective tactics for registering a phrase or tagline that may be informational in nature or already in the public lexicon.

The basis for failure-to-function refusals goes to the heart of trademark law, as the more commonly used and widespread a phrase, the less likely that the consuming public will recognize it as connoting a single source and serving as a trademark. Many failure-to-function refusals concern phrases that either convey information (e.g., MADE IN THE USA) or display a familiar or widespread saying (e.g., ONCE A MARINE, ALWAYS A MARINE or I ♥ DC), often in the areas of apparel and other consumer products.

In In re Rodeowave Entertainment, LLC, U.S. Serial No. 87801076 (November 13, 2020), the Board held that the record evidence failed to show that the mark JUST ANOTHER DAY IN PARADISE, applied for a variety of decorative consumer home products, was “a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark.” Although the application was filed on the intent-to-use basis and the Examining Attorney submitted numerous instances of third-party use of the same mark on the same types of consumer products (e.g., home décor items, coffee mugs, pillow covers), the Board focused on the fact that the evidence did not demonstrate that JUST ANOTHER DAY IN PARADISE is “used in everyday parlance” or “conveys a common social, political, patriotic, religious or other informational message.” Id. At 12. Accordingly, the familiarity of this phrase apparently did not rise to the level to where it might be deemed “widespread,” so the Board reversed the failure-to-function refusal.

By contrast, the Board recently deemed the following example marks incapable of functioning as trademarks, with little way of differentiation as compared to the JUST ANOTHER DAY IN PARADISE opinion: LEGAL LANDMINES (for business coaching and educational services), SHE KNEW SHE COULD (for jewelry, blank journals, beach bags, drinking glasses, clothing, and playing cards), and TEXAS LOVE (for hats and shirts). It is interesting to ponder whether the well-known lifestyle brand LIFE IS GOOD would have encountered this issue if this mark – arguably a fairly widespread phrase prior to the brand’s rise – were the subject of an application today instead of in the 1990s.

The subjective reasoning in these cases offers little to brands and practitioners seeking a foolproof strategy to get past the increasing volume of failure-to-function refusals. Until more guidance is provided, it is still wise to confirm in the clearance process whether a phrase or tagline mark seems to be already “out there” in the public jargon – otherwise, you probably won’t be living it up in Office Action paradise.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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