Trademarks Need to be More Than Merely Informational or Laudatory

To be registerable as a trademark, a slogan needs to be more than merely informational in nature, or to be more than common laudatory phrases or commonly expressed concepts or sentiments that would ordinarily be used in business or in the particular trade or industry. In re Texas With Love, LLC, 2020 USPQ2d 11290, at *3 (TTAB 2020) (affirming refusal to register TEXAS LOVE for hats and shirts because “it would be perceived not as a source identifier, but instead as a widely-used phrase that merely conveys a well-recognized and commonly expressed concept or sentiment, specifically love for or from Texas”); In re Eagle Crest, Inc., 96 USPQ2d at 1229 (affirming refusal to register “Once a Marine, Always a Marine” for clothing because it would be perceived as an informational slogan “to express support, admiration or affiliation with the Marines”). See also Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (finding SNAP SIMPLY SAFER merely descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes”); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness)

“A critical element in determining whether a term or phrase is a trademark is the impression the term or phrase makes on the relevant public.” In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). “[E]vidence of the public’s perception may be obtained from ‘any competent source, such as consumer surveys, dictionaries, newspapers and other publications.”’ Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015) (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985)). Internet evidence is relevant to show consumer perception. In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007).

The Trademark Trial and Appeal Board recently affirmed a refusal to register the mark DESIGNED, SOURCED, AND BUILT IN THE USA for hand-sanitizing preparation and surgical face masks.  In re NuGeneration Technologies, LLC, Serial Nos. 88852858 and 88866690 (TTAB Apr. 7, 2022).

The Examining Attorney refused registration under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 for failure to function as a mark because the “wording is merely informational and constitutes a commonplace phrase that is widely used in the marketplace,” noting web pages that showed “designed in the USA”, “built in the USA,” and “sourced in the USA” separately for various goods.  See In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) (where the examining attorney made a determination that a proposed mark failed to function as a mark, “the burden was on applicant to establish by competent evidence that it does serve such function”).

The TTAB found that although the complete phrase “designed, sourced and built in the USA” was not used by others in connection with the particular goods claimed by the applicant, “the Examining Attorney’s evidence shows that all types of businesses have adopted this slogan.” The TTAB noted that in prior Board cases, evidence of adoption by various businesses, not limited to any particular sector, was found to be probative of informational use. See In Re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1157 (TTAB 2019) (third-party usage examples “show that people are exposed to the ordinary meaning of the phrase ‘investing in American jobs’ in everyday life” from commercial businesses in various industries); In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992) (evidence of use by media and businesses in a variety of industries established that the slogan THINK GREEN for mailing and shipping items and weather-stripping does not function as a trademark); In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (evidence that food stores and other businesses use the informational phrase “why pay more” was probative of use of the phrase as a common merchandising slogan used by others in connection with a variety of businesses).

Here we find the evidence sufficient to show that DESIGNED, SOURCED, AND BUILT IN THE USA is a common phrase used by businesses and industries to not only convey support for American made products, but to encourage a preference for them by intimating better quality, safety and durability due to the designing, sourcing and building of the goods in the United States. Consumers accustomed to seeing similar wording by third-parties to support American businesses and products will not perceive DESIGNED, SOURCED, AND BUILT IN THE USA as pointing uniquely to a single source. See, e.g., In re Greenwood, 2020 USPQ2d 11439, at *3 (GOD BLESS THE USA would not be perceived as a source indicator but as an expression of patriotism, affection, or affiliation with the United States of America); In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403-04 (TTAB 2018) (consumers accustomed to seeing similar, ornamental displays of I LOVE YOU on bracelets and jewelry from different sources will not perceive I LOVE YOU appearing on bracelets as pointing uniquely to applicant as a single source).

The TTAB in other cases involving phrases ordinarily used in business and industry to convey support for American-made goods and encourage a preference for American products, also found that such phrases would not function as a source indicator. See, e.g., In re Wal-Mart Stores Inc., 129 USPQ2d at 1156 (“the slogan INVESTING IN AMERICAN JOBS is like other statements that would ordinarily be used in business or industry, or by certain segments of the public generally, to convey support for American-made goods”); In re Remington Prods., 3 USPQ2d 1714, 1715 (TTAB 1987) (with respect to the mark PROUDLY MADE IN USA, “[i]t is common knowledge that today’s American marketplace has a surplus of foreign-made goods and that American manufacturers are anxious to encourage purchasers to give preference to American products.”

The trademark attorneys at Thomas P. Howard, LLC are experienced in the prosecution of trademark applications before the USPTO, as well as in enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.