How you can identify an “incapable informational matter” and what you can do if it is refused registration.
A trademark must indicate the source of goods or services and identify and distinguish those goods or services from those of others.
Marketers are often attracted to using common words in a suggestive context or familiar slogans in a clever way. But applications for trademark registration have been routinely rejected when the selected term does not function to indicate source because it is the generic name of a category of goods or services (“soda” for a soft drink), is merely ornamental (a floral pattern on china), or is merely descriptive and has not acquired distinctiveness through use, called “secondary meaning” (“cold and creamy” for ice cream).
Slogans and other terms that are merely informational in nature (“100% cotton”), and common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry (“proudly made in the USA”), also are not registrable and have been called “informational matter.”
Now, the U.S. Patent and Trademark Office (“USPTO”) has further refined this category of unregistrable mark by giving it the name “incapable informational matter.” This is a term that conveys an informational message and would be perceived by the relevant public in a way that can never function as a trademark. This determination is to be made with a particular focus on the applicant’s and any competitors’ websites and social media pages, among other sources of information.
In the USPTO’s draft Examination Guide 17 issued January 19, 2017, the USPTO identifies three types of marks that it considers to be in this category, although it says this list is not exhaustive:
(1) Terms that provide information about the goods or services
--FRAGILE for labels and bumper stickers
--SPECTRUM for illuminated multicolored pushbutton switches
--GUARANTEED STARTING for motor vehicle services.
--HOURS OF ENERGY NOW for an energy drink
(2) Widely used messages, or their derivatives, that are commonplace or express social, political, religious, or other messages
--OCCUPY WALL STREET (or “Occupy DC” or “Occupy Congress”)
--ONE NATION UNDER GOD
--ONCE A MARINE, ALWAYS A MARINE
(3) Religious texts or references conveying support, admiration, sponsorship, or affiliation with a widely used religious message
--EYE FOR AN EYE
--EVEN THOUGH I WALK THROUGH THE VALLEY OF THE SHADOW OF DEATH, I WILL FEAR NO EVIL
Oppositions or cancellations may assert this basis as well. For example, United States Soccer Federation opposed an application by Aztec Shops, Ltd. to register I BELIEVE THAT WE WILL WIN! for clothing items. The applicant maintained that the slogan was associated with San Diego State University as a result of substantial sales and advertising of goods displaying this slogan, but the Trademark Trial and Appeal Board found that this slogan had been used by others to convey enthusiasm and support for various sports teams and political causes and could not serve as an indicator of source. United States Soccer Federation, Inc. v. Aztec Shops, Ltd., Opposition No. 91220225 (January 28, 2017) (not precedential).
Since an “incapable informational mark” is not capable of acquiring secondary meaning as a source indicator, it can never become a trademark and cannot even be placed on the Supplemental Register, which otherwise permits the registration of marks that are capable of developing secondary meaning.
What to Do
If your application is rejected on this ground, your possible responses may include (a) an argument that this characterization is inappropriate; (b) a disclaimer of the exclusive right to use the term apart from the mark as shown if the mark contains other protectable elements; or (c) deleting the term if it is a separable element, the deletion does not materially alter the mark or change its overall commercial impression, and the mark contains other protectable elements.
For further information, please contact William M. Borchard or your CLL attorney.
This ON MY MIND™ Blog post © 2017 by Cowan, Liebowitz & Latman, P.C., New York, NY.
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