United States: Precedential No. 33: Another Failure-To-Function Refusal

Last Updated: December 4 2019
Article by John L. Welch

In yet another in a stream of failure-to-function decisions, the Board affirmed a refusal to register the word+design mark shown immediately below, for "crabmeat," on the ground that the phrase fails to function as a trademark under Sections 1, 2, and 45 of the Lanham Act. However, the Board reversed a refusal founded on applicant's failure to comply with the examining attorney's misguided Rule 2.61 demand for information about the goods. In re Ocean Technology, Inc., 2019 USPQ2d 450686 (TTAB 2019) [precedential] (Opinion by Judge Cindy B. Greenbaum).

Failure-to-Function: A failure-to-function refusal is based on a determination as to how the proposed mark would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006). To make that assessment, the Board looks at the specimens of use and other evidence showing how the terms are actually used in the marketplace. In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting Eagle Crest, 96 USPQ2d at 1229). "The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark." Id.

The examining attorney contended that the proposed mark would not be perceived as a source indicator because it is "presented in an informational manner and consists of terms that are commonly used in Applicant's trade or industry to denote the purity, quality and ingredients of crabmeat and other food products." She provided evidence of third-party use of "the same or essentially synonymous terms to inform purchasers of the quality and ingredients of the products."

The Board found that the minimal stylization of the wording in the propose mark does not create a commercial impression separate from the words themselves, and the photographic depiction of a crab merely reinforces the informational nature of the wording. Moreover, the Board agreed with the examining attorney that proposed mark, as displayed on the specimen of use, "just conveys the contents of the package to consumers, and does not show any indication of source that may be perceived by the general public."

The specimen displays the proposed mark on the side of the product container in a manner that simply informs purchasers that the package contains all-natural, gourmet, pasteurized crabmeat. Nothing in the combination of wording, carriers, font and crab design in the proposed mark . . . results in a registrable composite. Rather, this evidence supports a finding that the proposed mark, as a whole, fails to function as a trademark for the identified goods.

Ocean Technology attempted to overcome this refusal by amending to the Supplemental Register, by claiming acquired distinctiveness, and by asserting inherent distinctiveness. However, the Board pointed out, matter that does not indicate source cannot be registered because it does not meet the statutory definition of a mark. See Sections 1, 2, and 45 of the Lanham Act; In re Boston Beer Co., L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (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 is incapable of acquiring distinctiveness under Section 2(f)); Water Gremlin, 208 USPQ at 90 ("Appellant's asserted intention to adopt the package design to indicate source may well be true, but intent or lack of intent at the time is not controlling. Nor is proof that a particular container actually functions as a means of indication of source to some purchasers. Not all designs or words which in fact indicate or come to indicate source will be restricted in use to a single merchant.") (emphasis added by the Board).

The Board then considered four declarations submitted by applicant - not as proof of distinctiveness, but only on the issue of whether the proposed mark functions as a trademark - and it found the declarations to be of limited probative value because, among other reasons, they did not reflect the viewpoint of ordinary consumers. In conclusion, the Board found that the proposed mark would not be perceived as identifying a particular source.

While we have given careful consideration to Applicant's evidence of alleged consumer perception (i.e., the four declarations) solely to determine whether the proposed mark functions as a trademark, the evidence is insufficient to demonstrate that the relevant consumers recognize the proposed mark as indicating the source of the identified goods rather than as merely informational. See Eagle Crest, 96 USPQ2d at 1229. Accordingly, Applicant's proposed mark fails to function as a trademark for Applicant's goods.

Rule 2.61 Request for Information: Under Rule 2.61(b), an examining attorney "may require the applicant to furnish such information, exhibits, affidavits or declarations . . . as may be reasonably necessary to the proper examination of the application." The examining attorney required that Ocean Technology explain whether its goods "do or will consist of 100% real Callinectes crab." However, the wording "100% real Callinectes crab" does not appear in the proposed mark, and so there was "no justification why the requirement for information would be reasonably necessary to the proper examination of the application." The Board therefore reversed this refusal.

[Note that Ocean Technology lost a very similar appeal earlier this year in a decision that was deemed nonprecedential (TTABlogged here). There, the mark at issue did include the phrase "100% real Callinectes crab," and the Board affirmed a refusal based on noncompliance with a Rule 2.61(b) request for information. Apparently the same examining attorney made a mistake in the instant case.]

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