There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any kind, but because they fail to function as trademarks due to their informational characteristics and widespread use. This blog provides the background to refusals common phrases may encounter in the U.S. Patent and Trademark Office (USPTO), recent cases decided by the TTAB involving such phrases and how practitioners should deal with searches for and clearance of marks involving phrases. Background to ‘failure to function as a trademark.’ Section 45 of the Lanham Act defines a “trademark” as “any word, name, symbol or device, or any combination thereof … used by a person … to identify and distinguish his or her goods … from those manufactured or sold by others and to indicate the source of the goods , even if that source is unknown.” 15 U.S.C. Section 1127. [Emphasis added]. Section 1202.04(b) of the Trademark Manual of Examining Procedure (TMEP) sets forth the USPTO’s policy about phrases failing to function as marks: “Widely used messages” include slogans, terms, and phrases used by various parties to […]
