Articles Tagged with Inconsistent Examination At The Trademark Office

As a trademark practitioner, I hope this decision issued by the Trademark Trial and Appeal Board (the “Board” or “TTAB”) is an indication that the Board will be tougher on inconsistent examination by Examining Attorneys at the USPTO. See In re The Random Acts of Kindness Foundation, Serial Nos. 87245967, 87245971, 87245973, and 87245975 (February 15, 2018) [not precedential], where the Board reversed four refusals for various goods and services which encouraged the performance of certain acts of kindness for others. The Applicant filed four applications based on use in commerce for the mark RANDOM ACTS OF KINDNESS. Each application was refused for failing to function as a trademark or service mark under the Trademark Act because the wording “RANDOM ACTS OF KINDNESS” is informational and a widely used phrase. The Examining Attorney determined that the slogan is incapable of indicating one source of goods or services.

Terms and expressions that merely convey information will not be allowed to register as trademarks. There has been a long line of cases that refuse common slogans even when the slogan is applied in a source-identifying manner. For example, the following slogans were refused on this basis, DRIVE SAFELY, ONCE A MARINE ALWAYS A MARINE, and THINK GREEN. The key question is how will the public or relevant consumer base perceive the proposed mark. A mark has to indicate a single source for goods or services. The Examining Attorney introduces numerous articles, titles of books, and excerpts from websites demonstrating the common use of the phrase, “RANDOM ACTS OF KINDNESS”. Even though there was some minimal stylization in the mark, there was not enough according to the Examining Attorney to produce an independent commercial impression separate from the literal wording itself.

The underlying basis for refusal asserted by the Examining Attorney, failing to function as a trademark is a frequently asserted ground for refusal. To review other common grounds for application refusal, see our web page entitled, Common Grounds For Refusal Of A Trademark. The applicant argued that it had multiple other trademarks for the term “RANDOM ACTS OF KINDNESS” and variations thereof registered on the Principal Register for various goods and services. In rebuttable the Examining Attorney relied on In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001), for the principle that each case must be decided on its own facts, and the Board is not bound by prior decisions that contain different records. The Examining Attorney also cited In re Cordua Rests., Inc., 118 USPQ2d at 1635, for the proposition that the Trademark Office must review each application to determine if it is in compliance with all the rules, even if the USPTO mistakenly registered a similar or identical mark that possessed the same deficiency.

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