1202.04    Informational Matter

Merely informational matter fails to function as a mark to indicate source and thus is not registrable because consumers would perceive such matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others. See, e.g., In re Brunetti, 2022 USPQ2d 764, at *1-4 (TTAB 2022) (FUCK for various carrying cases; jewelry; sports and other carrying bags; and various retail, marketing, and advertising services for such consumer goods), appeal docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023); In re Greenwood, 2020 USPQ2d 11439 (TTAB 2020) (GOD BLESS THE USA for accent pillows, decorative centerpieces of wood, and decorative non-textile wall hangings); D.C. One Wholesaler, Inc. v. Chien , 120 USPQ2d 1710 (TTAB 2016) (I ♥ DC for bags, clothing, plush toys); In re AOP LLC, 107 USPQ2d 1644, 1655 (TTAB 2013) (AOP for wine); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (ONCE A MARINE, ALWAYS A MARINE for clothing); In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTRUM for illuminated pushbutton switches); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455 (TTAB 1998) (DRIVE SAFELY for automobiles); In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) (THINK GREEN and design for weatherstripping and paper products); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers); In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) (WATCH THAT CHILD for construction material); In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (FRAGILE for labels and bumper stickers).

Matter may be merely informational and fail to function as a source indicator for various reasons, including one or more of the following:

  • The matter merely conveys general information about the goods or services (see TMEP §1202.04(a)).
  • The matter is a common phrase or message that would ordinarily be used in advertising or in the relevant industry, or that consumers are accustomed to seeing used in everyday speech by a variety of sources (see TMEP §1202.04(b)).
  • The matter is a direct quotation, passage, or citation from a religious text used to communicate affiliation with, support for, or endorsement of, the ideals conveyed by the religious text (see TMEP §1202.04(c)).

Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. See In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020) (citing D.C. One Wholesaler, Inc., 120 USPQ2d at 1716); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1150 (TTAB 2019). Furthermore, the presence of the "TM" or "SM" symbol on the specimen cannot transform an unregistrable designation into a registrable mark. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *32-33 (TTAB 2021) (citing In re Eagle Crest, Inc., 96 USPQ2d at 1231); In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1461.

The critical inquiry in determining whether matter functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public. In re Vox Populi Registry Ltd., 25 F.4th 1348, 1351, 2022 USPQ2d 115, at *2 (Fed. Cir. 2022) ("In analyzing whether a proposed mark functions as a source identifier, the Board focuses on consumer perception." (citing In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *3 (TTAB 2020))); Univ . of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (citing In re Greenwood, 2020 USPQ2d 11439, at *2); In re DePorter, 129 USPQ2d 1298, 1303 (TTAB 2019) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229)); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827 (TTAB 2012) (noting that the critical inquiry in determining whether a mark functions as a trademark is the "commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the goods or merely as an informational phrase)"); In re Remington Prods., Inc., 3 USPQ2d at 1715.

If there are no limitations on the goods or services in the application, the relevant consuming public comprises all potential purchasers of the goods or services. In re Team Jesus LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *5 (TTAB 2019)); see Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *3).

Additionally, designs that would be perceived as the equivalent of a word generally are not legally distinguishable from the word. In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (TTAB 2020) (citing Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 331, 137 USPQ 881, 883 (C.C.P.A. 1963); In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983)) (finding LOVE with a depiction of the Texas flag or a map of TEXAS was well-recognized as the wording TEXAS LOVE or LOVE TEXAS and would only be perceived by consumers as conveying the same widely recognized sentiment of showing pride and love for Texas). In informational matter cases, the form in which the term appears is "much less significant than the impression it conveys." Id. at *5 (citing D.C. One Wholesaler, Inc., 120 USPQ2d at 1716; In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986)). Furthermore, the Trademark Trial and Appeal Board has held that an accurate pictorial representation of a word can be informational and incapable of identifying the source of an applicant’s goods. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *5-6 (TTAB 2019) (holding an accurate pictorial representation of a crab simply informed prospective consumers that applicant’s product was crabmeat and reinforced the informational nature of the wording surrounding the image).

If a proposed mark is merely informational, an examining attorney must issue a failure-to-function refusal. If registration is sought on the Principal Register, the statutory basis for this refusal is §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051 –1052, 1127, for trademarks, and §§1, 2, 3, and 45, 15 U.S.C. §§1051 –1053, 1127, for service marks. If registration is sought on the Supplemental Register, the statutory basis is §§23 and 45, 15 U.S.C. §§1091, 1127. In this case, an applicant cannot overcome the failure-to-function refusal on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). See TMEP §1202.04(d) regarding amending to the Supplemental Register or claiming §2(f) in response to a merely informational failure-to-function refusal.

If a proposed mark contains registrable matter, an examining attorney must require a disclaimer of the merely informational matter, unless the mark is unitary. See Trademark Act Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a), 1213.05. Merely informational matter may be deleted from the drawing if: (1) the deletion does not result in material alteration of the mark and does not change the mark’s overall commercial impression; (2) the matter to be deleted is separable from the other elements; and (3) the mark contains other registrable source-indicating matter. See TMEP §§807.14–807.14(a).

In support of the refusal or disclaimer requirement, the examining attorney must explain the basis for the refusal and provide evidence showing that the matter would not be perceived as a trademark or service mark that indicates a particular source of goods or services. This support may include evidence of decorative or informational use by applicant or other manufacturers with goods or services of a similar nature, or evidence of frequent use by others in connection with the sale of their own goods or services. See, e.g., In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (noting that "the record includes many examples of third-party uses for goods that are the same as or similar to Applicant's identified goods" such that "[i]t is clear from how the term is used by multiple third parties that TEXAS LOVE merely conveys a well-recognized concept or sentiment, specifically love for or from Texas; the term does not identify the source of Applicant's goods"); In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (noting "the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources . . . ‘does not create the commercial impression of a source indicator’"; rather the "evidence as a whole shows that TEAM JESUS is a commonplace message of Christian affiliation"); In re Wal-Mart Stores, Inc., 129 USPQ2d at 1153-56 (noting third-party usage in several industries, such as in connection with products offered for sale and titles and texts of media and news articles, of the phrase INVESTING IN AMERICAN JOBS showed the public would perceive the phrase to "function not as a mark but instead as a merely informational expression of support for Amercian workers"); D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that "the marketplace is awash in products that display the term I ♥ DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source"); In re Eagle Crest, Inc., 96 USPQ2d at 1230 (noting that, because consumers would be accustomed to seeing the phrase ONCE A MARINE, ALWAYS A MARINE "displayed on clothing items from many different sources, they could not view the slogan as a trademark indicating source of the clothing only in applicant"); In re Wakefern Food Corp., 222 USPQ 76, 78 (TTAB 1984) (finding WHY PAY MORE! to be a common advertising slogan across a wide variety of goods and services and thus it failed to function as a service mark for supermarket services, relying on specimens that showed use of the slogan in phrases such as "Why pay more for groceries?" and "More meat for less. Why Pay More?").

However, evidence of third-party use does not need to show use of the proposed mark with goods or services to be probative of consumer perception. In re DePorter, 129 USPQ2d at 1302 (finding social media tweets and posts probative to show widespread non-trademark use of #MAGICNUMBER108 to identify affiliation with the Chicago Cubs’ baseball team and their 2016 World Series win 108 years after their last one). As the critical focus of the refusal or disclaimer requirement is consumer perception, any evidence demonstrating widespread use of the matter in question is relevant to determining whether consumers would perceive the matter as a mark. In re DePorter, 129 USPQ2d at 1302 (citing TMEP §1202.04(b)).

Although the failure-to-function refusal is typically a specimen-based refusal, a refusal must be issued, regardless of the filing basis, if the evidence supports a determination that a proposed mark is merely informational and thus would not be perceived as an indicator of source. See TMEP §1202; In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *7 (finding an application for registration filed pursuant to §44(e) subject to the requirement that the applied-for mark function as a mark); In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting the propriety of and affirming a failure-to-function ornamentation refusal in a §66(a) application).

For an application where use has been alleged, registration must be refused even if the specimen of record shows technically acceptable evidence of use. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (quoting D.C. One Wholesaler, Inc., 120 USPQ2d at 1716) (finding the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources, did "not create the commercial impression of a source indicator, even when displayed on a hangtag or label").

See TMEP §1202 regarding use of subject matter as a trademark, §1202.04(d) regarding response options to a merely informational failure-to-function refusal, and §1301.02(a) regarding informational matter that does not function as a service mark.

1202.04(a)    General Information About the Goods or Services

Matter that only conveys general information about the applicant’s identified goods or services, including highly laudatory claims of superiority, fails to function as a mark. This matter is not registrable because consumers would perceive it as imparting its ordinary meaning and not as serving to identify and distinguish the applicant’s goods or services from those of others and to indicate their source. See, e.g., In re Bos. Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA "so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark"); In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) (holding GUARANTEED STARTING for servicing of motor vehicles to facilitate cold-weather operation "does no more than inform the public with reasonable accuracy what is being offered" and is not a service mark); In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *1, *9 (TTAB 2019) (holding ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED and the same mark with the additional wording FROM NORTH AMERICA, which both included a design of an accurate pictorial representation of a crab, for crabmeat merely informational and not source identifying because they "just convey[ed] information about the identified crabmeat"); In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *18 (TTAB 2019) (holding SCOOP for ice cream and frozen confections merely informational and not source identifying "because, at most, it merely informs purchasers of the serving size of the goods"); In re TracFone Wireless, Inc., 2019 USPQ2d 222983 (TTAB 2019) (holding UNLIMITED CARRYOVER for telecommunications services merely informational and not source identifying because the phrase "simply provides information about the services" and applicant’s manner of use underscored and illustrated that meaning); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) ("Slogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable."); In re T.S. Designs, Inc., 95 USPQ2d 1669, 1671 (TTAB 2010) (finding CLOTHING FACTS to be informational matter and not a source identifier based on the likely consumer perception of the phrase as used on a clothing label reminiscent of the "Nutrition Facts" label for food products); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006) (finding SPECTRUM for illuminated pushbutton switches merely informational and not source identifying because the mark was used in a manner that merely informed potential purchasers of the multiple color feature of the goods); In re Schwauss, 217 USPQ 361, 362 (TTAB 1983) (finding FRAGILE for labels and bumper stickers merely informational and devoid of any source-identifying function because the term merely informed consumers of the fragility of the item to which the labels and stickers were attached).

Any evidence demonstrating that the public perception of the matter is merely to convey general information about the goods or services supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, social-media pages, product fact sheets, and other promotional materials) showing the wording listed with other features of the goods/services, showing the wording being used in a manner that does not stand out from other informational text, or showing the same or similar wording commonly used in business or by other providers of similar goods or services to impart the same kind of general information.

1202.04(b)    Widely Used Messages

Matter that merely conveys ordinary, familiar, or generally understood concepts or sentiments, as well as social, political, religious, or similar informational messages in common use, would not be perceived as indicating source and thus is not registrable. In re Team Jesus, LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020)). Consumers understand such widely used, commonplace messages as conveying "the ordinary concept or sentiment normally associated with [the message], rather than serving any source-indicating function." Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *33-34 (TTAB 2021). The more commonly a term or phrase is used in everyday speech or in an associational or affinitive manner by various sources, the less likely consumers will perceive the matter as a trademark or service mark for any goods and services. E.g., In re Greenwood, 2020 USPQ2d 11439, at *2-3 (TTAB 2020) (citing In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 (TTAB 2018)); In re DePorter, 129 USPQ2d 1298, 1303 (TTAB 2019) (quoting In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)); In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019); see also In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460 (TTAB 1998) (holding DRIVE SAFELY not to function as a mark when used in connection with automobiles and structural parts therefor because it would be perceived merely as an everyday, commonplace safety admonition); In re Manco, 24 USPQ2d 1938, 1942 (TTAB 1992) (holding THINK GREEN for products advertised to be recyclable and to promote energy conservation not to function as a mark because it merely conveys a message of environmental awareness or ecological consciousness); cf. In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1403 (TTAB 2018) (I LOVE YOU, appearing on bracelets, would be seen as a term of endearment rather than a source-identifying trademark).

Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *6; In re DePorter, 129 USPQ2d at 1299. Furthermore, goods that feature such messages are typically purchased because of the expressive sentiment conveyed by the message and not because they serve as a means for the consumer to identify and distinguish the applicant’s goods or services from those of others. For example, the proposed mark ONCE A MARINE, ALWAYS A MARINE, for clothing, was found not to function as a mark because the evidence showed that it was a common motto used by, and in support of, the U.S. Marines. In re Eagle Crest, Inc., 96 USPQ2d at 1232. Similarly, the proposed mark NO MORE RINOS!, for various goods, including bumper stickers, signs, and t-shirts, was found not to function as a mark because the evidence showed that consumers were accustomed to seeing this well-known political slogan on these types of goods from a variety of different sources. In re Hulting, 107 USPQ2d at 1179. Additionally, the proposed mark TEAM JESUS for clothing and religious educational and entertainment services was held not to function as a mark because the evidence showed that due to the nature and ubiquity of the phrase, including on apparel from many sources, consumers would perceive the wording merely as a well-recognized message of Christian affiliation. In re Team Jesus LLC, 2020 USPQ2d 11489, at *1, *3-6. Lastly, the proposed mark FUCK, for various carrying cases, jewelry, sports and other carrying bags, and various retail, marketing, and advertising services for such consumer goods, was held not to function as a mark because substantial dictionary, third-party use on the same and other consumer and household goods, and other internet evidence showed ubiquitous use of the word in its ordinary meaning, the applicant stated "that he intend[ed] to use FUCK as the word is commonly understood," and consumers would merely perceive the term as such. In re Brunetti, 2022 USPQ2d 764, at *39, *43-44 (TTAB 2022), appeal docketed, No. 23-1539 (Fed. Cir. Feb. 27, 2023).

Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (noting that the informational significance of I ♥ DC was "reinforced by the fact that similar expressions in the form of ‘I ♥__’ have also been widely used to express such enthusiasms with respect to other places and things"); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (finding PROUDLY MADE IN THE USA informational in nature; the addition of "Proudly" before the common phrase "Made in USA" merely added "further information about the state of mind of the manufacturer and/or its employees in connection with the production of the goods"); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (finding BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases, noting that "[t]he fact that applicant may convey similar information in a slightly different way than others is not determinative.").

Any evidence demonstrating that the public would perceive the wording merely as conveying the ordinary meaning of the message, or enthusiasm for, affinity with, or endorsement of the message, supports this refusal. In addition to dictionary or encyclopedia entries showing the meaning or significance of wording, supporting evidence may include materials (e.g., website pages, Internet search results lists if sufficient surrounding text is included, social-media pages, product fact sheets, and other promotional materials) showing the applicant’s manner of use and the manner of use by third parties. See, e.g., In re Wal-Mart Stores, Inc., 129 USPQ2d at 1153 (finding that INVESTING IN AMERICAN JOBS failed to function as a mark for various retail, grocery, and convenience store services and promoting public awareness of goods made or assembled by American workers, because third-party product sales webpages and media/news articles showed "third parties in several industries commonly use the phrase . . . to convey the same general idea (supporting American jobs)" that applicant did); D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (finding that I ♥ DC failed to function as a mark for clothing items, because the evidence showed the wording had "been widely used, over a long period of time and by a large number of merchandisers as an expression of enthusiasm, affection or affiliation with respect to the city of Washington, D.C.").

The size, location, dominance, and significance of the wording as it is used in connection with the goods or services should also be considered to determine if any of these elements further support the perception of the wording merely as an informational message rather than as indicating the source of goods or services. In re Hulting, 107 USPQ2d at 1179 (comparing In re Lululemon Athletica Can. Inc., 105 USPQ2d 1684, 1689 (TTAB 2013)). For example, evidence of use of the wording as adornment, by either the applicant or third parties, may support a determination that a proposed mark does not convey the commercial impression of a trademark that identifies a single source. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6; In re Hulting, 107 USPQ2d at 1179-80; see also D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (noting that the marketplace is inundated with products featuring the wording "as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source"). In addition, use of the matter in a less prominent manner than other clear source identifiers may also support the conclusion that the matter will be perceived as merely conveying an informational message. Cf. In re Duvernoy & Sons, Inc., 212 F.2d 202, 101 USPQ 288 (C.C.P.A. 1954) (finding that the phrase "Consistently Superior," which appeared less prominently than appellant’s trade name, was "merely an adjunct thereto, operating in the shadow thereof, to indicate to purchasers that appellant’s goods are always superior in quality" and was "merely a statement of fact which should be available to anyone who feels that his products are, in fact or belief, consistently superior, and wishes to so advise the public").

1202.04(c)    Matter from Religious Texts

Some proposed marks comprise direct quotations, passages, or citations from religious texts, such as the Bible, Quran, Torah, or Diamond Sutra. These quotations, passages, or citations are often used by the providers of goods or services, and by consumers, to communicate affiliation with, support for, or endorsement of, the ideals or concepts found in the religious texts in which the quotation, passage, or citation originated. Because consumers are accustomed to seeing religious references used in this manner in the marketplace, they are unlikely to perceive the matter as indicating source and instead would perceive it merely as conveying an informational message of religious affiliation, endorsement, or support for the messages in the texts. See In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *3 (TTAB 2020); In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).

When a quotation, passage, or citation from a religious text serves as an indicator of support or affiliation and not of source, it fails to function as a mark. Thus, if the proposed mark consists, in its entirety, of this type of matter, the examining attorney must issue a failure-to-function refusal on the ground that it merely conveys an informational message of religious affiliation, endorsement, or support for the ideals or concepts conveyed in the religious text. If the quotation, passage, or citation is part of a proposed mark that also contains registrable elements, the examining attorney must require a disclaimer of the quotation, passage, or citation, if otherwise appropriate. See TMEP §§1202.04, 1213, 1213.02.

Given the many different translations of religious texts, it is possible that a quotation or passage from one English version of a religious text will be slightly different from the same quotation or passage in a different English translation of the same religious text. However, for purposes of the examining attorney’s determination, it is sufficient that the quotation or passage appears in any version of the relevant religious text.

To support a refusal or disclaimer requirement on this ground, the evidence must establish that the applied-for mark comprises a quotation, passage, or citation taken from a religious text and that consumers would perceive it as merely conveying affiliation with, affinity for, or endorsement of, the religious message. Evidence may include applicant’s own specimens, advertising, or website, showing how the applicant uses the wording in connection with the identified goods or services, as well as the advertising or packaging of other providers of the same or similar goods or services. Any evidence showing that the use of religious matter in connection with the identified goods or services is typical of use by marketplace participants to proclaim support for, affiliation or affinity with, or endorsement of, the message may support this refusal. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016). While the refusal or disclaimer may apply regardless of whether the identified goods or services themselves are religious in nature, the fact that the proposed mark is applied to religious goods or services may lend further support to the refusal or disclaimer requirement.

Sometimes a quotation or passage from a religious text has become part of common, everyday language. If the evidence shows that the average consumer would be unlikely to perceive the wording as conveying information about the applicant’s religious affiliation or endorsement without additional context, the examining attorney should not issue a failure-to-function refusal based on the wording being from a religious text. Instead, the examining attorney should consider whether the wording fails to function because it conveys a widely used message. See TMEP §1202.04(b). The following examples illustrate this point:

  • The proposed mark is EYE FOR AN EYE. A review of an online search engine’s results for "eye for an eye" shows that some of the results directly reference religion, but most do not. Many of the results that do not reference religion use the phrase in a discussion of justice. In addition, entering "eye for an eye" into online dictionaries returns results referencing justice, but not religion. This suggests that the wording by itself does not generally have a religious connotation without additional indications of a religious origin, and thus it should not be treated as a quotation or passage from a religious text. But the examining attorney should consider whether the available evidence supports the conclusion that the proposed mark fails to function because it is a commonplace message or otherwise merely conveys a social, political, or ideological message.
  • The proposed mark is EVEN THOUGH I WALK THROUGH THE VALLEY OF THE SHADOW OF DEATH, I WILL FEAR NO EVIL. A review of an online search engine’s results for this phrase shows that most of the results reference religion with only a very few that do not directly mention religion. Of the results that reference religion, most specifically note that the wording is from the Bible’s Psalm 23:4. Thus, the results indicate that the wording has ongoing religious connotation even without additional context, and thus the examining attorney should treat it as a direct quotation or passage from a religious text.

If the matter comprising the proposed mark is religious in nature but is not a quotation, passage, or citation from a religious text, the examining attorney should not refuse registration based on the matter being derived from a religious text. Instead, the examining attorney should consider whether it is merely informational because it conveys a widely used religious message. See TMEP §1202.04(b).

1202.04(d)    Response Options

An applicant may respond to a merely informational failure-to-function refusal by submitting evidence demonstrating that the matter is perceived as indicating a single source for the identified goods or services. See In re Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (reversing the refusal to register QUALITY THROUGH CRAFTSMANSHIP for radio equipment, holding that the wording functioned as a mark because applicant extensively advertised the slogan, using it in the manner of a trademark on the goods, and the examiner failed to show others using the wording). But see In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8-9 (TTAB 2019) (three form declarations from customer/industry representatives found insufficient to show customer perception as this was "a rather small number" and it was not clear that the declarants reflected the perceptions of most relevant purchasers of applicant’s crabmeat).

The amount and nature of evidence that may be sufficient to establish that the matter would be perceived as source indicator rather than merely informational is determined on a case-by-case basis. The more generalized or commonplace and widely used the matter is, the more likely it would be perceived as merely informational and the less likely it would be perceived as indicating the source of the relevant goods/services. See Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *34 (TTAB 2021) (citing In re DePorter, 129 USPQ2d 1298, 1304-05 (TTAB 2019)); In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3 (quoting In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)).

Claims of long-time use or substantial sales and advertising generally do not prove recognition of the matter as a mark and will not obviate the failure-to-function refusal. See In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Wakefern Food, Corp., 222 USPQ 76, 79 (TTAB 1984); see also In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *9 ("claims about [a]pplicant's sales figures and ‘confidential’ advertising expenditures are not supported by documentary evidence, or put into context in the relevant market, and, in any event, that type of information is more directed to the question of acquired distinctiveness rather than capability").

Similarly, submission of an otherwise acceptable specimen bearing the proposed mark, such as a hang tag or label, will not obviate the refusal because the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (holding the nature and ubiquity of the phrase TEAM JESUS, including on apparel from many sources, did "not create the commercial impression of a source indicator, even when displayed on a hangtag or label") (quoting D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)). If the evidence shows that the public would not perceive the proposed mark as serving to indicate the source of the identified goods or services, it does not function as a mark and may not be registered regardless of the manner of use depicted on the specimens or the filing basis on which applicant relies. The examining attorney should not suggest that a substitute specimen be submitted or that the application be amended to an intent-to-use filing basis.

Furthermore, an applicant cannot overcome a failure-to-function refusal issued on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8; see In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *4 (TTAB 2019). Matter that does not operate to indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered, regardless of claims of acquired distinctiveness or the register on which registration is sought. See In re Bos. Beer Co., 198 F.3d 1370, 1373-74, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA "is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark" and was incapable of acquiring distinctiveness under section 2(f)); In re Helena Rubinstein, Inc., 410 F.2d 438, 441-42, 161 USPQ 606, 608-09 (C.C.P.A. 1969) (holding PASTEURIZED for face cream so highly descriptive that it failed to function as a source identifier, noting that a proposed mark "cannot properly be registered as a trademark, even on the Supplemental Register, unless it is intended primarily to indicate origin of the goods and is of such a nature that the ordinary purchaser would be likely to consider that it indicated such origin"); D.C. One Wholesaler, Inc., 120 USPQ2d at 1710 (granting petition to cancel a registration on the Supplemental Register because the mark failed to function as a trademark); In re Remington Prods., Inc., 3 USPQ2d at 1715 (affirming a failure-to-function refusal and denying a claim of acquired distinctiveness for PROUDLY MADE IN THE USA for electric shavers and parts, noting that applicant’s "substantial sales and advertising of its product . . . does not provide recognition by the public of the subject slogan as a trademark").

See TMEP §714.05(a)(i) regarding amendment to the Supplemental Register or submission of a claim of acquired distinctiveness and §1212.02(i) regarding §2(f) claims as to incapable matter.