Failures to Perform and Probability of Confusion: Takeaways from Two Current Federal Circuit Trademark Choices

The U.S. Court docket of Appeals for the Federal Circuit just lately affirmed two Trademark Trial and Enchantment Board (TTAB) choices. In In re GO & Associates, LLC, 2022-1961 (Fed. Cir. Nov. 13, 2023), the Federal Circuit affirmed the TTAB’s refusal to register the mark EVERYBODY VS RACISM as a result of it did not perform as a trademark. In Trek Bicycle Corp. v. Isaacs, 2022-1434 (Fed. Cir. Nov. 15, 2023), the Federal Circuit affirmed the TTAB’s dismissal of Trek’s opposition to the registration of the RANGER TREK mark, discovering no chance of confusion with Trek’s registered marks, and that Trek’s bicycle fame didn’t lengthen to backpacks.

In re GO & Associates

In In re GO & Associates, GO sought to register the mark EVERYBODY VS RACISM for numerous items and providers, together with (1) attire, (2) baggage, and  (2) providers selling racial reconciliation. The inspecting legal professional refused registration beneath 15 U.S.C. §§ 1052 and 1053, discovering that the mark did not perform as a supply identifier and as a substitute conveyed an informational message.

So as to qualify for federal trademark registration beneath the Lanham Act, a mark should be capable to perform as a supply identifier. In different phrases, it should be capable to point out the supply of the applicant’s items or providers and distinguish them from others. This requirement stems from the core function of trademark legislation, which is defending the flexibility of customers to readily establish the sources of products and providers.

If a mark fails to perform as a supply identifier, it can’t be registered as a trademark beneath the Lanham Act. The Trademark Guide of Inspecting Process (TMEP) § 1202.04 explains that sure sorts of informational content material, equivalent to slogans utilized by the general public to convey sentiments, are sometimes not registrable as a result of the general public is unlikely to understand them as emblems or service marks figuring out a single business supply. The brink willpower is whether or not the general public perceives the mark as a supply identifier moderately than an informational message or sentiment.

Right here, the TTAB affirmed the refusal, discovering substantial proof that the mark was generally utilized by the general public in a non-trademark method to convey an anti-racist sentiment. The Federal Circuit agreed, emphasizing that “[i]f the PTO had been to permit the registration of marks which can be utilized by the general public in such a method that they can’t be attributed to a single supply, the aim of trademark legislation can be undermined.” Because the Supreme Court docket just lately said, “a trademark just isn’t a trademark until it identifies a product’s supply.” Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023).

GO raised the pending case of Elster v. Vidal that’s targeted on the mark “TRUMP TOO SMALL.” In that case, the Federal Circuit had concluded that the TTAB’s refusal to register was an unconstitutional violation of speech.  In that  Elster, in addition to others such because the FUCT case and MAKE AMERICA GREAT AGAIN registration, many commentators have urged that the marks needs to be rejected for failure to perform.  Within the GO attraction, the Federal Circuit discovered no precedential benefit in these instances as a result of failure to perform was not a difficulty on attraction there.   The courtroom additionally refused to name into query the USPTO’s “informational matter doctrine” — explaining that “[c]ontrary to GO’s place, nothing within the Lanham Act prohibits registration of a mark containing informational matter, as long as the mark additionally capabilities to establish a single business supply.”

As a result of substantial proof confirmed that the general public was unlikely to affiliate EVERYBODY VS RACISM with a single supply for GO’s items and providers, the Federal Circuit affirmed the denial of registration.

Trek Bicycle Corp. v. Isaacs

Within the second case, Trek opposed the registration of the RANGER TREK mark for attire and baggage, arguing a chance of confusion with its beforehand used and registered TREK marks. Making use of the DuPont elements, the TTAB dismissed Trek’s opposition, discovering inadequate proof of doubtless confusion.

I see the TREK mark as conceptually weak as a result of it’s so suggestive of out of doors actions.  The TTAB and Federal Circuit famous that:

• Dictionary definitions outlined “trek” as an “arduous journey” or “tough journey, hike or journey,” suggesting the phrase trek refers to out of doors actions.
• There have been third-party registrations containing the phrase “TREK” for attire and baggage, exhibiting the phrase is often utilized in reference to these items.
• These dictionary definitions and third-party registrations demonstrated that “trek” is a suggestive time period for attire and baggage used for out of doors trekking and mountaineering.

On the similar time, TREK is a well-known mark — however just for bicycles, not for backpacks.   In the long run, the courtroom gave most weight to the dearth of proof of  similarity and confusion. The courtroom agreed that the addition of RANGER to TREK “resulted within the events’ marks having a special total business impression.”

Though speech was not a central side of those choices they provide a glimpse into how trademark legislation has been designed to assist accommodate speech pursuits. Whereas marks that primarily perform as supply identifiers could be registered even when they comprise expressive content material, the bar for registrability stays excessive for marks whose main function is solely to convey a message.