Most people have heard the song by Lee Greenwood “God Bless the USA”. The song evokes a sense of patriotism and celebrates the freedoms we have in the United States. Lee Greenwood (“Greenwood”), as an individual, filed for a trademark on GOD BLESS THE USA. The mark filed for “accent pillows; decorative centerpieces of wood” in International Class 20. The mark also filed for “decorative wall hangings, not of textile” in International Class 27.
During examination of the mark, the Examining Attorney refused registration. The refusal based on the ground it failed to function as a trademark. Greenwood appealed the refusal. After the Examining Attorney filed her brief, Greenwood requested remand. He wanted to amend the mark to THE LEE GREENWOOD COLLECTION GOD BLESS THE USA. On remand, the Examining Attorney refused the proposed amendment on the ground it would materially alter the mark. The appeal proceeded to the Trademark Trial and Appeal Board to answer two questions. First, does the original GOD BLESS THE USA mark function as a trademark? If so, does the proposed amendment adding the words THE LEE GREENWOOD COLLECTION materially alter the mark?
Mark functioning as a source identifier
Regarding the mark functioning as a trademark, the threshold inquiry is whether consumers perceive the goods/services as a source identifier or as merely communicating the ordinary meaning of the words. Generally, consumers take widely-used commonplace messages at their ordinary meaning as opposed to identifying it with a particular source.
Greenwood argued as a successful and famous country music artist, the words “God Bless the USA” associate with his signature song of the same name by the general public. He noted the song downloaded at least 2.5 million times since reentering the Billboard Country Song Sales Chart. He also notes the first page of results when performing a Google search references his song.
Unfortunately for Greenwood, the Trademark Trial and Appeal Board agreed with the Examining Attorney. The TTAB found GOD BLESS THE USA is a common patriotic message. It is analogous to, and synonymous with, “God Bless America”. The phrase used by many different sources on a wide variety of goods, including various household items. Such common use makes it less likely the public would associate the phrase with a single common source. Accordingly, the TTAB found the mark fails to function as a trademark.
Material alteration of the mark to be THE LEE GREENWOOD COLLECTION GOD BLESS THE USA
With regard to the proposed amendment to the mark being a material alteration, Greenwood argues he is merely adding his previously registered mark THE LEE GREENWOOD COLLECTION to the GOD BLESS THE USA mark. Justification for this, Greenwood argued, is found in TMEP § 807.14(b) stating, “[a]n amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.” The Examining Attorney countered that the amendment is not required to be permitted.
The TTAB recited the history of both case law as well as the law regarding material alteration. The current reading of the law finds the key comparison is between the proposed amendment and the drawing of the mark in the original application. The question is whether the old and new forms of the mark create the same commercial impression in the eyes of a consumer. The TTAB found that a proposed amendment adding previously registered matter for the same goods or services is not an exception to the rule against material alteration. Rather, it is a factor considered in determining whether the alteration is material.
In the instant case, the TTAB found the addition of the “house mark” to the applied-for mark would create a greater different in the sight and sound of the original proposed mark. They noted the additional four words appear prominently as the first part of the proposed mark and create a noticeably different pronunciation. The TTAB found the proposed modification would drastically alter the proposed mark’s meaning and commercial impression. Thus it is considered a material alteration and is impermissible.
Two great lessons learned with this case. First, common phrases are unlikely to function as a source identifier, particularly if many different sources use the phrase in an ornamental sense. Second, when determining a material alteration to a mark, one must look to see if the old and new forms of the mark make the same commercial impression on a consumer. If there is a different commercial impression, the alteration is likely material and will not be permitted.
No, common phrases used by many people cannot function as a source identifier and thus cannot obtain trademark protection.