More than a mere intent that a word or phrase function as a trademark is needed to make it a trademark. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1152 (TTAB 2019) (“The mere fact that a phrase proposed for registration appears on the specimens of record does not establish its use as a service mark.”); In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993); see generally Roux Labs, Inc. v. Clairol Inc., 427 F.2d 823, 66 USPQ2d 34, 39 (CCPA 1970) (“The mere fact that a combination of words or a slogan is adopted and used by a manufacturer with the intent Clairol has manifested here – does not necessarily mean that the slogan accomplishes that purpose in reality.”).

Whether that word or phrase functions as a mark depends on whether the relevant public, i.e., purchasers or potential purchasers of the relevant goods or services, would perceive the phrase as identifying the source or origin of those goods or services. See, e.g., In re TracFone Wireless, Inc., 2019 USPQ2d 222983 at *1-2 (TTAB 2019); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998) (“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 Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992).

BUILT BY GOD mark

The Trademark Trial and Appeal Board recently considered a refusal to register BUILT BY GOD for “clothing, namely, T-shirts, shirts, sweaters, coats, jeans, socks, shorts, tracksuits, shoes, boots, tank tops, swimsuits, dresses, bras, caps, hats, beanies” in International Class 25 for failing to function as a mark. In re Kollins Ezekh, Ser. No. 88759272 (TTAB Aug. 18, 2022).

Merely Conveying Religious Devotion

The TTAB found that “the phrase's biblical origins” were “clear.” Associated with Bible passages, “there is no question that the phrase is religiously significant, to Christians especially.”

[B]ecause the record shows that the phrase is commonly used to express devotion or appreciation, rather than to identify source, consumers would be unlikely to perceive it as a source identifier. Cf. In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (affirming failure to function refusal of TEAM JESUS for clothing in part because the clothing is “presumably offered for consumers who want to convey their Christian affiliation by wearing apparel that prominently proclaims that message”).

Rather than being perceived as a source identifier, the phrase “built by God” would be perceived as merely conveying religious devotion, or appreciation for God.

Common Ornamental Use by Others

Even if we were to ignore the proposed mark's religious origin, message and significance, its widespread and typically ornamental use by third parties for clothing and other products is by itself a sufficient basis to find that it fails to function as a trademark. Widely used phrases such as BUILT BY GOD often fail to function as trademarks. In re Wal-Mart, 129 USPQ2d at 1153 (widespread third party use of a phrase “makes it less likely that the public will perceive it as identifying a single commercial source and less likely that it will be recognized by purchasers as a trademark”); D.C. One Wholesaler, 120 USPQ2d at 1716 . . . ; In re Hulting, 107 USPQ2d at 1177 (“The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”) (quoting In re Eagle Crest, 96 USPQ2d at 1229); In re Volvo Cars, 46 USPQ2d at 1459 (DRIVE SAFELY is merely “an everyday, commonplace safety admonition”); Reed v. Amoco Oil Co., 611 F. Supp. 9, 225 USPQ 876, 877 (M.D. Tenn. 1984) (“[C]ourts are reluctant to allow one to obtain monopoly rights to the use of a common word or phrase.… The more common a phrase is, the more it appears in everyday parlance, less is the likelihood that the phrase identifies the source of a certain product, and less is the likelihood that it deserves trademark protection ….”). Here, as in these “widespread use” cases, the proposed mark is too commonly used by too many third parties in a variety of forms for it to identify the source of Applicant's goods.

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This common ornamental use of the phrase influences public perception of the phrase and its purpose, which in this case is to convey a message rather than to identify source. In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 (TTAB 2020) (“in the clothing industry, this common message is used on t-shirts as a feature such that ‘the display itself is an important component of the product and customers purchase the product' not associating it with a particular source but because of the message”) (citing D.C. One Wholesaler, 120 USPQ2d at 1716); In re Hulting, 107 USPQ2d at 1178-79 (“Clearly, the placement, size, and dominance of the wording are consistent with informational (or ornamental), not trademark use. Such prominence is more consistent with the conveying of an informational message than with signifying a brand or an indicator of source.”).

Furthermore, there was no evidence specifically quantifying consumer exposure through sales information or reviews.

The TTAB also was concerned that granting a registration for BUILT BY GOD “would achieve the absurd result of hampering others in their use of the common [phrase]” phrase for clothing or related products. In re Schwauss, 217 USPQ at 362. See also In re Volvo Cars, 46 USPQ2d at 1460 (“to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase” to promote safe driving) and America Online, Inc. v. AT&T Corp., 243 F.3d 812, 57 USPQ2d 1902, 1910-11 (4th Cir. 2001) (widespread use of “You Have Mail” in connection with an email service could not be protected as a trademark where consumers would perceive it “in its commonly understood way”).

Religiously Significant and Commonly Used Ornamentally

Holding that “the evidence shows that the phrase BUILT BY GOD is religiously significant and too commonly used, ornamentally, in connection with clothing for it to be perceived as a trademark, and Applicant should not be able to deny competitors (who according to the record also use the phrase) the right to use it freely”; the TTAB affirmed the refusal because the phrase fails to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.

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.