One of the fundamental principles of trademark law is that trademarks serve as an indicator of source. The USPTO does not permit a trademark to register unless it is capable of functioning as a mark. Specifically, the mark must be capable of distinguishing the goods and services of one from those of another. This is critical to preventing consumer confusion—one of the main functions of a trademark.
Functioning as a trademark
Whether a mark is inherently capable of functioning as a trademark depends on the relevant public. Specifically, whether the relevant purchasers would perceive the applicant’s mark as identifying the applicant as the source of the goods/services. Moreover, the Board has held previously that “[s]logan and other items 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 the particular trade or industry, are not registerable.” In re Eagle Crest, Inc., 96 USPQ2d, 1227, 1229 (TTAB 2010).
The JUST ANOTHER DAY IN PARADISE mark
If an examining attorney at the USPTO believes that the applied-for mark is incapable of serving as an indicator of source, they issue a failure-to-function refusal. Such was the case for Rodeowave Entertainment’s JUST ANOTHER DAY IN PARADISE intent-to-use application (“the Rodeowave application”). In the Rodeowave application, the examining attorney stated that “the applied-for mark is a commonplace term, message, or well-recognized concept or sentiment” and not registerable with the USPTO.
The examining attorney cited the use of the mark by several sources. Specifically, the examining attorney pointed to the use of the mark in several Etsy stores, music artists, and magazines. As a result, the examining attorney concluded that consumers would not perceive the mark as identifying a source. Specifically, consumers commonly encounter the JUST ANOTHER DAY IN PARADISE mark in their daily lives.
The Board’s Decision
As previously mentioned, whether the applicant’s mark can function as a trademark depends on the relevant purchasers. To this end, Rodeowave argued that the evidence “does not show a commonplace use of the phrase by the public”. Furthermore, Rodeowave argued that how Rodeowave ultimately uses its mark in commerce, it critical to how consumers perceive it.
Typically, the widespread use of a mark may be sufficient to render the proposed mark incapable of functioning as a trademark. However, after reviewing the evidence, the Board concluded that the evidence submitted in the Rodeowave application “as a whole does not establish that the applied-for-mark is a common or familiar expression in such widespread use that it is inherently incapable of functioning as a mark. Nevertheless, the Board fell short of concluding that the “applied-for-mark functions as a source identifier,” rather only that it “is capable of functioning as a trademark.” Thus, how Rodeowave ultimately shows the use of its mark to the USPTO will likely be the deciding factor for its registration.
Applicants should proceed with caution when attempting to register marks that fall on the line between common phrases and potential source identifiers. Likely, applicants with marks that fall on the border should expect a long road to trademark protection. Ideally, coined or arbitrary marks offer brands the greatest strength of trademark protection and help avoid costly battles. Furthermore, ensuring that you properly use your trademark in connection with your goods or services is a critical factor in how it is ultimately perceived.
Trademarks protect consumers by preventing confusion as to the origin of a particular good or service.
The country singer Phil Vassar.