Failures to Perform and Probability of Confusion: Takeaways from Two Latest Federal Circuit Trademark Selections

The U.S. Court docket of Appeals for the Federal Circuit lately 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 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 probability 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 companies, together with (1) attire, (2) luggage, and  (2) companies 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 an alternative conveyed an informational message.

With a purpose 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 companies and distinguish them from others. This requirement stems from the core objective of trademark regulation, which is defending the flexibility of customers to readily determine the sources of products and companies.

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 Analyzing Process (TMEP) § 1202.04 explains that sure kinds of informational content material, akin to slogans utilized by the general public to convey sentiments, are usually not registrable as a result of the general public is unlikely to understand them as logos or service marks figuring out a single business supply. The brink dedication 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 had been to permit the registration of marks which can be utilized by the general public in such a approach that they can’t be attributed to a single supply, the aim of trademark regulation can be undermined.” Because the Supreme Court docket lately acknowledged, “a trademark shouldn’t be a trademark except 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 perform.  Within the GO enchantment, the Federal Circuit discovered no precedential advantage in these instances as a result of failure to perform was not a difficulty 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 features to determine 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 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 luggage, arguing a probability of confusion with its beforehand used and registered TREK marks. Making use of the DuPont components, 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 outside actions.
• There have been third-party registrations containing the phrase “TREK” for attire and luggage, displaying 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 luggage used for outside trekking and mountain climbing.

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

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