Trademark registration refused because Slogan failed to act as a source identifier. IN RE DOUGLAS ELLIMAN REALTY

A trademark is something that the producer of a product brands products with to distinguish its products from competitor’s products in the marketplace. In the United States using a trademark to brand products is the event that creates a claim to a trademark. The rights associated with a trademark can be further strengthened by registering the trademark with the United States Patent and Trademark Office. A trademark user can register their trademark with the United States Patent and Trademark Office by filing an application for registration. Trademark applications are scrutinized by the United States Patent and Trademark Office to ensure that the applied for trademark meets the requirements for registration and that the trademark is not confusingly similar to another trademark which is already registered.

Frequently people, who are not familiar with trademark law, get confused about the relationship that must exist between the producer of a product and its trademarks. This confusion leads people to believe that they can get a trademark on any popular phrase and race to the United States Patent and Trademark Office to register that phrase as their trademark. It is unlikely that the United States Patent and Trademark Office will grant a trademark application for a popular phrase, unless that applicant can show that there is an association between the producer of a product and the phrase.

Although it is possible to register advertising phrases and slogans, a phrase or slogan that does not function as a trademark to indicate the source of goods or services to identify and distinguish them from others cannot be registered on either the Principal or the Supplemental register. Slogans and other items that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable.

IN RE DOUGLAS ELLIMAN REALTY, Serial No. 88640177 (TTAB 2020) is an example of a slogan that was denied registration because it failed to indicate the source of services.

The applicant in this case is a realty company that operates throughout the United States. Applicant filed an application to register THE NEXT MOVE IS YOURS as a service mark. The examining attorney at the United States Patent and Trademark Office refused the application because the phrase was a commonly used informational slogan and did not indicate the source of a product or service. As evidence the examining attorney submitted several examples of other real estate agents using the phrase THE NEXT MOVE IS YOURS in their advertising material.

Applicant appealed the examining attorney’s refusal to the Trademark Trial and Appeal Board. On appeal Applicant argued that while a slogan or tagline may be informational, it can also function as a trademark. In its opinion the TTAB noted that the more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark. The evidence provided by the examining attorney showed that several other real estate companies were using the phrase as call to action. Therefore the relevant public would view the phrase as an invitation to contact the advertiser rather than a source identifier. The TTAB found that the third-party use evidence was sufficient to demonstrate that THE NEXT MOVE IS YOURS fails to function as a mark in connection with Applicant’s services and affirmed the refusal.

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