The TTAB affirmed three refusals to register the design shown below, comprising a "three-dimensional cylindrical cast of female breasts and torso," for associational, educational, and fund-raising services related to breast cancer awareness, finding that (1) applicant's specimens of use fail to show the applied-for-mark in use with the recited services, (2) the design fails to function as a service mark, and (3) assuming arguendo that the first two refusals were overcome, it constitutes nondistinctive trade dress that lacks acquired distinctiveness. In re Keep A Breast Foundation, Serial No. 85316199 (August 7, 2017) [precedential] (Opinion by Judge Peter W. Cataldo).
Specimens of Use:
"A specimen that shows only the mark with no reference to, or association with, the services does not show service mark usage." In re DSM Pharm., Inc., 87 USPQ2d 1623, 1624 (TTAB 2008). Applicant's original specimen of use, shown immediately below, gave no indication of the services involved.
Its first substitute specimen, shown in part immediately below, does not display the breast cast depicted in the application drawing, but rather six different breast casts. Applicant's own promotional materials state that these breast casts are "one-of-a-kind plaster forms of the female torso ... given to the castee to document a specific point in their breast cancer journey." The casts are individual works that lack uniformity and thus they fail to depict a "substantially exact representation of the mark." See Rule 2.51.
Furthermore, although this specimen refers to the services, it appears to identify the services by the more traditional word mark "The Keep A Breast Foundation:" i.e., the presence of other readily perceived source identifiers "makes in impossible to conclude that the public would perceive the casts themselves as source identifiers."
A second substitute specimen (above) displays five breast casts
of different sizes and shapes on a table with other paraphernalia.
Again there is no mention of or association with the recited
services. This specimen neither depicts the design shown in the
application drawing, nor does it associate the supposed mark with
any services such that the breast casts would be perceived as a
source indicator.
And so the Board affirmed the refusal on the ground that
applicant's specimens fail to show use of the applied-for
designation as a source indicator for the recited services.
Failure to Function: The USPTO is statutorily
constrained, by Section 1, 2, 3, and 45 of the Trademark Act,
"to register matter on the Principal Register only if its
functions as a mark." The critical determination is how the
proposed mark is perceived by relevant consumers.
The Board agreed with Examining Attorney Marlene Bell that
applicant's proposed mark fails to function as a service mark.
The specimens of use fail to associate the design with the
services, "thus making it unlikely that the relevant consumers
will perceive the casts as indicating source."
If anything, the applied-for mark appears to be created as part of the educational and associational services offered under the designation "Keep A Breast Foundation Treasured Chest Program." As stated in Applicant's pamphlet, "The Keep A Breast Foundation's Treasured Chest Program strives to gives women that are newly diagnosed with breast cancer a unique opportunity to document their body and their feelings at a specific time in their treatment by turning their casted torso into a beautiful piece of art."
The evidence also showed that other charitable organizations
similarly make breast/torso casts as part of their support
services. The Board concluded that the cast will be perceived as
part of applicant's services rather than as a source
indicator.
Acquired Distinctiveness: If a term or design
fails to function as a mark, no amount of evidence of acquired
distinctiveness can overcome such a refusal. [Seems like a
nonsequitur - ed.]. Nonetheless, for the sake of
completeness, and assuming arguendo that the design serves
as a source indicator and that the specimens of use are acceptable,
the Board considered applicant's Section 2(f) claim.
Given that the alleged mark is not Applicant's main identifier (Keep A Breast Foundation is), and given that it is in the form of a product, which consumers do not tend to view as marks but as what they are (products), we find Applicant's use since April 2000 is insufficient, in itself, to demonstrate that consumers perceive the breast/torso cast as an indicator of source.
Applicant pointed to more than $1 million dollars in donations
and $100,000 spent on advertising for its services, but that
evidence was of minimal probative value because applicant failed to
indicate what amounts were raised and spent in connection with the
mark at issue. Applicant displays its breast/torso casts along with
other potential source identifiers, and promotes its services under
the name "Treasured Chest Program." Thus the Board could
not infer that, from applicant's advertising, consumers will
infer that the breast/torso cast is a source identifier.
Applicant provided declarations attesting that the 1,500 breast
casts it has developed include those of numerous celebrities,
musicians, and professional athletes, and that media outlets have
published stories about "The Keep A Breast Foundation's
Breast Casts and the organization's services associated with
the Breast Cast campaigns." But there was no indication that
the breast cast was displayed or discussed as a source indicator,
for example, by way of "look for" advertising. Moreover,
the fact that the breast casts differ from one another make it more
unlikely that applicant could show that such individualized casts
serve as a mark.
In addition, Section 2(f) requires that an applicant's use of a
proposed mark be "substantially exclusive." The fact that
third parties offer breast casting as part of breast cancer
awareness programs "strongly undercuts Applicant's claim
that it is making substantially exclusive use of its proposed
breast cast configuration as a service mark or trade dress."
Therefore, applicant's claim of acquired distinctiveness fails
on that basis also.
Conclusion: The Board affirmed the three refusals
to register.
TTABlog comment:, WYHA? Is this like a
phantom mark? Is it an attempt to register an idea (breast casting)
as a service mark? Applicant called it "akin to
packaging," but isn't it some "tertium
quid" that is neither product shape nor
packaging?
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