By Leonora Hoicka (IBM Associate General Counsel, IP Law), Lisa Ulrich (IBM Senior Attorney, IP Law), and Jenny Greisman ( IBM Attorney, IP Law)
IBM thanks the United States Patent and Trademark Office (Office) for the opportunity to comment on the Draft Examination Guide on Incapable Informational Matter (1/19/2017). The following comments discuss IBM’s concerns with respect to having informational matter as a separate subject matter refusal; the necessity to determine, pursuant to the traditional “spectrum of distinctiveness”, whether informational matter can function as a trademark; as well as the risk of placing too much discretion to examining attorneys without providing a clearer guidance on what constitutes appropriate “evidence” to make consistent decisions.
I. “Incapable informational matter” should not be analyzed as a separate subject matter refusal because the analysis for other grounds for refusal suffice.
1. Information about the Goods/Services: The Draft Guide states “[t]hough this failure-to-function refusal is similar to the descriptiveness refusal, in the failure-to-function refusal the focus is primarily on whether the use of the wording by the applicant and third-parties will be perceived as an indicator of a single source of origin.” See Draft Guide at page 3. However, the descriptiveness refusal is based on the same category of “failure-to-function” refusal because a mark is assumed to fail to function as a source indicator if it merely describes the relevant goods/services. Furthermore, it is almost impossible to cut a clear line between informational matter and descriptive matter - when a mark conveys information about goods/services, it is just another way to say that it is describing the goods/services. In fact, all the case law examples cited in the Draft Guide under this section from page 3 to page 4 can be refused on the basis of descriptiveness. For example, FRAGILE used on labels and bumper stickers to put on fragile objects describes the function/purpose/use of the specified goods. SPECTRUM for illuminated pushbutton switches describes the multiple color feature of the goods. GUARANTEED STARTING for motor vehicle services describes the quality and feature of applicant’s services of wintering vehicles and vehicle starting services.
2. Commonplace Messages: Similarly, a commonplace message that conveys the ordinary, everyday meaning of the message within its usual context in connection with relevant goods/service rather than indicating the source of origin can be refused on the basis of, and using the analysis for, descriptiveness/genericness, or lack of distinctiveness.
3. Social, Political, Religious and Similar Messages: Messages that serve only as ornamental features of goods but not source indicator can be refused on the basis of ornamentation. TMEP §1202.03. Like any other design element, widely used messages or slogan may be used ornamentally on goods such as clothing (t-shirts and sweatshirts), jewelry/fashion accessories (bracelets), and household items (ceramic plates). All the examples listed in the Draft Guide under this section are messages used ornamentally on clothing, fashion accessories or various souvenir items used by numerous third parties in the same or similar industries. For example, NO MORE RINOS! and I ♥ DC were also cited in TMEP Ornamentation §1202.03(f)(i).
II. Whether informational matter can function as a trademark should be determined pursuant to the traditional “spectrum of distinctiveness” analysis in the relevant context of use in connection with applicant’s identified goods/services, and thus a claim of acquired distinctiveness under §2(f) should be a relevant and proper response to the informational matter refusal.
1. Whether informational matter can function as a trademark has to be analyzed in the relevant context of use in connection with the applicant’s identified goods/services. See Remington Products, Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods). The Draft Guide also explains that in order to “determine whether matter merely conveys information or an informational message, the “critical inquiry … is how the designation would be perceived by the relevant public” and “[b]oth the meaning and the context of use of the wording are relevant to this determination.” See Draft Guide at page 3. Therefore, it is inconsistent for the Draft Guide to state that:
(1) Commonplace Messages: “However, some messages may be found to be in such common usage across a wide variety of goods/services that the specific good/services in the application are not relevant.” See Draft Guide at page 5. The Draft Guide fails to list even one example of such broad commonplace message that can be reviewed outside of its usual context of use and it is posited that consumers will not view such message not associated with goods/services as a trademark, i.e., an indicator of source. Furthermore, all the examples listed under this section of the Draft Guide at page 5 are directly related to the goods/services identified in the applications (e.g., DRIVE SAFELY for applicant’s automobiles and structural parts, THINK GREEN for applicant’s products made from recycled material to promote energy conversation; and PROUDLY MADE IN USA for applicant’s American made electric shavers), and may properly be analyzed under a descriptiveness basis.
(2) Social, Political, Religious and Similar Messages: “Since the rationale is that the goods/services are purchased because of the popular message, the specific goods/services in the application may be less important when determining if this refusal applies.” See Draft Guide at page 5. Does this mean that once a message has become popular (another question is how to define “popular”), no one can trademark it even if no other third party has been using the same message in relevant fields? If this is the case, then it is in direct conflict with the U.S. “first to use” trademark regime. In addition, all the examples cited by Draft Guide under this section are based on evidence the mark is widely used by third parties in the relevant industry in connection with the identified goods/services to show support for the certain message conveyed by such mark (e.g., ONCE A MARINE, ALWAYS A MARINE is widely used by third parties in the clothing industry to show support of the Marines; ONE NATION UNDER GOD is widely used by third parties to sell bracelets/wristbands to signify patriotism; NO MORE RINOS is widely used by third parties on similar types of goods as applicant’s to show political support; and KEEP CALM AND FOLLOW JESUS is widely used by third parties on t-shirts to show support for a religious sentiment). See Draft Guide from page 5 to page 6.
2. Whether informational matter can function as a trademark should be determined pursuant to the traditional “spectrum of distinctiveness” analysis, and a claim of acquired distinctiveness under §2(f) should be a relevant and proper response to the informational matter refusal.
(1) A matter can only be considered as a trademark if it is distinctive. A distinctive mark is one that is capable of serving as a source indicator to identify and distinguish the applicant’s goods/services from those of others. The distinctiveness of a mark can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. See 15 U.S.C. §1052 and TMEP §1209. If a proposed trademark is not inherently distinctive (for example, it is a descriptive or ornamental mark), it may be registered on the Principal Register under §2(f) of the Trademark Act, 15 U.S.C. §1052(f), upon proof of acquired distinctiveness to show that the consuming public has come to perceive the mark as identifying not only the goods/services but the source (producer or provider) of those goods/services. See Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (S.D.N.Y. 1972).
(2) Under §2(f) of the Trademark Act, an applicant has the right to claim acquired distinctiveness in order to register its mark, except in respect of the items “expressly excluded” in §2(a), (b), (c), (d), e(3) (with certain exceptions) or (e)(5). Incapable informational matter does not expressly fall under any of these sections. Thus, contrary to what the Draft Guide suggests on page 11 that “[a] claim of acquired distinctiveness under §2(f)…is not a relevant and proper response to the failure-to-function refusal as incapable matter,” there is no statutory basis to claim that an incapable informational matter refusal cannot be contravened by proving acquired distinctiveness where there is sufficient evidence to show that the mark is perceived by the relevant public as a source indicator. In fact, when discussing an applicant’s response options, the Draft Guide cites one example of registering TAKE A CLOSER LOOK for banking services at page 11 to explain that an applicant can overcome the informational matter refusal by showing the mark has been used in a trademark manner combined with the lack of evidence that third parties in the banking industry use the mark. Such evidence to show continuous and exclusive use of the mark in commerce is exactly the type of evidence usually used by applicants to prove acquired distinctiveness. See 37 C.F.R. §2.41(a)(2) and TMEP §§1212.05–1212.05(d) (Acquired distinctiveness can be shown through “[a] statement verified by the applicant that the mark has become distinctive of the applicant’s goods or services by reason of the applicant's substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made.”).
III. Without providing clearer guidance on the problematic issues discussed above, the Draft Guide will provide too much discretion to examining attorneys, who may ultimately rely on arbitrary sources of evidence to make inconsistent decisions.
The Draft Guide explicitly states that “[t]there is no set number of results that will establish that the wording be refused” as informational matter, and thus the examining attorney “should rely on his or her own judgement based on all of the available evidence.” See Draft Guide at page 7. However, without providing a clear guidance on what constitutes appropriate “evidence” (e.g., authoritative texts or authorities for determining “social, political, religious or similar messages), or the type or extent of “results” that an examining attorney should rely on, this will allow the examining attorney to use and cite arbitrary sources to support his or her discretionary judgments, resulting in a plethora of inconsistent examination reasons for refusals.
IV. It will place great burden on applicants to provide additional evidence to prove that the proposed mark is not informational, which hinders the harmonization of trademark systems among the world and makes it less attractive to conduct business in the U.S.
1. In addition to requiring the examining attorney to conduct additional research to collect more evidence from various sources to better understand how the mark is perceived by the relevant public, the Draft Guide also states that “[a] request for information from the applicant may also be issued pursuant to Trademark Rule 2.61(b) (“The examiner may require the applicant to furnish such information and exhibits as may be reasonably necessary to the proper examination of the application.”). See Draft Guide at page 2. Thus, examining attorneys may tend to refer such additional tasks back to applicants. No similar requirement or refusal basis exists in any other country in the world. In addition, based on IBM’s own trademark application prosecution experience, examining attorneys may ask multiple questions across a broad spectrum on matters that may not be relevant to the application in question, in order to search for evidence to reject the application on an informational matter basis, as set up in these Draft Guidelines.
2. Establishing a separate informational matter refusal basis will move the U.S. trademark system away from a harmonized trademark model consistent with many other jurisdictions in the world, to a more arbitrary and stringent system that is therefore less friendly and accommodating to applicants. This will eventually make it less attractive to conduct business and secure trademark protection in the U.S., which is certainly not beneficial to the U.S. economy growth in the long run.
IBM thanks the Office for providing an opportunity to submit comments regarding the Draft Examination Guide on Incapable Informational Matter. IBM would be happy to provide any clarification of our comments to the Office.