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

The U.S. Court docket of Appeals for the Federal Circuit not too long ago affirmed two Trademark Trial and Attraction Board (TTAB) selections. 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 didn’t operate 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 prolong to backpacks.

In re GO & Associates

In In re GO & Associates, GO sought to register the mark EVERYBODY VS RACISM for numerous items and companies, together with (1) attire, (2) baggage, and  (2) companies selling racial reconciliation. The analyzing lawyer refused registration underneath 15 U.S.C. §§ 1052 and 1053, discovering that the mark didn’t operate as a supply identifier and as an alternative conveyed an informational message.

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

If a mark fails to operate as a supply identifier, it can’t be registered as a trademark underneath the Lanham Act. The Trademark Guide of Analyzing Process (TMEP) § 1202.04 explains that sure sorts of informational content material, corresponding 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 logos or service marks figuring out a single industrial supply. The edge willpower is whether or not the general public perceives the mark as a supply identifier slightly 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 have been to permit the registration of marks which might be utilized by the general public in such a means that they can’t be attributed to a single supply, the aim of trademark legislation could be undermined.” Because the Supreme Court docket not too long ago acknowledged, “a trademark is just not 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 prompt that the marks must be rejected for failure to operate.  Within the GO enchantment, the Federal Circuit discovered no precedential advantage in these circumstances as a result of failure to operate was not a problem on enchantment 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 industrial 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 companies, 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 possible confusion.

I see the TREK mark as conceptually weak as a result of it’s so suggestive of outside 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, displaying the phrase is usually 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 climbing.

On the identical 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 industrial impression.”

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