A Proposed Mark Must Have A Source Identifying Function: Trademark Denied For “Keep America Great!” | Willcox & Savage
In a non-precedential opinion; In re America in Harm’s Way; Serial No. 87976064, issued on November 30, 2023, the United States Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”), decided the issue of whether a commonly used term or slogan can be registered as a trademark. The proposed mark was the phrase KEEP AMERICA GREAT! in standard characters for use and registration in connection with ornamental novelty pins.
The Applicant’s Petition
The Applicant, America in Harm’s Way, filed its application on January 27, 2017. In an office action issued on August 2, 2021, the examining attorney refused registration on the grounds that the proposed mark “is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.” In support of this conclusion, the examining attorney referenced evidence from Politico, CBS News, Amazon, Etsy and CNN of the common use of the term as “the slogan for Donald Trump’s re-election campaign” and that it is “closely associated with the former president and his ideals.” Thus, the Examining Attorney contended that the phrase “has been widely used by many different sources as a political informational message to convey support for ideas espoused by Donald Trump.”
Applicant countered that (1) it had established itself to consumers as a source of the goods for which the registration is sought; (2) it is the owner of a registered mark which shares a common element with the proposed mark and therefore, the proposed mark similarly indicates a source of goods; (3) it has used the proposed mark in a manner consistent with that of the registered mark, creating familiarity with the source in the consumer population; and (4) when applicant first used the mark to indicate the source of its goods, the mark was not in common use.
Much of Applicant’s initial argument centered on its prior registration for the mark KAG, which it asserted is an acronym for KEEP AMERICA GREAT! It argued that because its lapel pins show the proposed mark KEEP AMERICA GREAT on both sides of the pins and also include the registered mark KAG on the back side of the pins, the back side would “be visible to the consumer when this consumer buys the product, but not to the viewer of the already-purchased pin, when worn by the consumer.” Therefore, it asserts, “…both “KAG!” and “KEEP AMERICA GREAT!” indicate the source of the Applicant’s (now-Registrant’s) product to the consumer, and they would perceive “KAG!” and “KEEP AMERICA GREAT!” as part of the same family of marks, since they have “common characteristics.”
As noted above, the Applicant also argued that because when it first started using the KEEP AMERICA GREAT! proposed mark, that mark was not commonly used, it was “not recognizable as a political message.”
The first of these arguments, which appear to essentially conflate points 1 through 3 into a single argument relating to the relevance of the prior registration were rejected in the subsequent Final office action because “applicant’s prior registration for the mark “KAG!” . . .is not relevant to analysis of whether or not the phrase KEEP AMERICA GREAT! is a widely used message, and thus is not persuasive.” Furthermore, “although applicant [had] placed the mark on the back of the ornamental pin, the entirely ubiquitous nature of this phrase in the media and on traditional goods for showing support (e.g. hats, pins, signs) suggests that this will be perceived as an informational phrase rather than as a source indicator.”
The Applicant’s Request for Reconsideration
Applicant filed a request for reconsideration of the Final refusal pressing the argument that, when it first conceived of and began using the KEEP AMERICA GREAT! mark in 2017, the mark was not in common use, as established by the fact that nearly all of the evidence of uses of the proposed mark cited by the examining attorney as a common political message occurred after the applicant had begun its use of the proposed mark. Applicant argued “[r]efusing registration of the mark based on the actions of subsequent would-be registrants (e.g. copycats and/or alleged infringers) and inferring a meaning for the mark in view of the actions of these third parties is prejudicial to Applicant.” It also asserted that the grounds for refusal “also give inappropriate weight to actions that occurred after Applicant applied to register the mark.”
The Applicant’s Request for Reconsideration was Denied and the Applicant Appealed
In its decision, the Board initially stated that “whatever else it may do, a trademark is not a trademark unless it identifies a product’s source (this is a Nike) and distinguishes that source from others (not any other sneaker brand); citing, Jack Daniel’s Props., Inc. v. VIP Prods., LLC 599 U.S. 140, 2023 USPQ2d 677 at *4 (2023). It further concluded that:
Here, notwithstanding Applicant’s use of the proposed mark in connection with the identified goods and its intent that the phrase function as a mark, the record reveals that consumers would not perceive KEEP AMERICA GREAT! as identifying the source of the Applicant’s ornamental novelty pins. Rather, because the phrase is used by so many vendors and other third parties, including ornamentally on many products, it does not identify any particular source or product.
In addition, the Board stated: “[a]s the Examining Attorney points out, ‘[e]legibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought.’” Therefore, Applicant’s argument that it was the first user of the phrase, before it was commonly used by others, is irrelevant.
This decision confirms the position of the USPTO that commonly used phrases, slogans or terms cannot be registered because they do not function as source identifiers of the goods or services associated with the common phrase, slogan or term. Moreover, being the first user of the term is not relevant to the issue of registrability since the analysis focuses on the scope of use of the term at the time registration is sought, not at the time of the application.
