Craigslist, Inc.

Trademark Trial and Appeal Board

May 31, 2013

No. 77956070 (T.T.A.B. May. 31, 2013)

THIS OPINION IS A NOT
PRECEDENT OF THE TTAB

Mailed: May 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Craigslist, Inc.
_____

Serial Nos. 77956067; 77956069; 779560701
_____

James L. Vana of Perkins Coie LLP for Craigslist, Inc.

Marc J. Leipzig Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney)
_____

Before Quinn, Kuhlke and Hightower, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Craigslist, Inc., filed applications to register on the Principal
Register the peace symbol as shown below

for the following services:

1 On June 12, 2012, the Board granted the examining attorney’s motion to consolidate the
appeals of the above-noted applications “[i]n light of the similarity of the records and issues
in these cases.” Citations to the briefs and record refer to the briefs and record filed in
application Serial No. 77956067; however, we have, of course, considered all arguments and
evidence filed in each case.
Serial Nos. 77956067; 77956069; 77956070

2

Advertising and information distribution services, namely, providing
classified advertising space via the global computer network; providing
consumer product and service information via the Internet; promoting
the goods and services of others over the Internet; providing an online
business information directory on the Internet; computerized database
management; promoting and advertising information about the
professional services of others; providing on-line computer databases
and on-line searchable databases featuring classified listings and want
ads; providing on-line computer databases and on-line searchable
databases featuring information, classified listings and
announcements about employment information and resumes, job
openings, volunteer information and volunteer opportunities through
community and charitable organizations and businesses, information
about community service programs, information about politics,
business events, and business meetings; classified listings for rentals
of a wide-variety of consumer and business goods; computer services,
namely, providing on-line computer databases and on-line searchable
databases featuring consumer information on a wide variety of topics
of general interest to the consuming public, in International Class 35;2

Providing on-line computer databases and on-line searchable
databases featuring information, classified listings and
announcements about housing, apartments, condominiums, town
homes, real estate, commercial real estate, roommate-wanted, and
rental and leasing and for sale advertisements for the foregoing, in
International Class 36;3 and

Providing online interactive bulletin boards for transmission of
messages among computer users concerning classified listings and
listings for announcements, events, classes, meetings, activities,
housing, real estate, roommates, rentals, for sale advertisements,
commercial notices, want ads, employment, job listings, resumes,
volunteerism, services, community, personals, politics, family, arts and
information on a wide variety of topics of general interest to the public;
providing on-line forums and discussion groups for transmission of
messages among computer users concerning health, family, arts,

2 Application Serial No. 77956067, filed on March 10, 2010, based on an allegation of first
use and use in commerce on August 18, 2004, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).

3 Application Serial No. 77956069, filed on March 10, 2010, based on an allegation of first
use and use in commerce on August 18, 2004, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).

Serial Nos. 77956067; 77956069; 77956070

3

politics, leisure, romance, work, and information on a wide variety of
topics of general interest to the public; electronic mail services;
electronic mail subscription services; and electronic transmission of
messages, data and images, in International 38.4

The applications include a description of the proposed mark as consisting of
“a peace symbol.” In addition, applicant’s amendment of the drawing page to depict
the mark in color and to claim the color purple as a feature of the mark in each
application has been accepted by the examining attorney.5
The examining attorney has refused registration on the ground that
applicant’s proposed mark fails to function as a service mark to identify and
distinguish applicant’s services from those of others and to indicate the source of
applicant’s services under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§
1051, 1052 and 1127.
Prosecution History
A brief review of the prosecution history of these applications is helpful to set
the stage for the issues that remain for appeal. The examining attorney initially
refused registration because “the applied-for mark, as used on the specimen of
record, does not function as a service mark … .”6 This refusal was based on two
grounds: 1) the specimens did not support service mark use because they were

4 Application Serial No. 77956070, filed on March 10, 2010, based on an allegation of first
use and use in commerce on August 18, 2004, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).

5 “Subsequent Final” Office Action (November 13, 2012).

6 First Office Action (May 30, 2010).

Serial Nos. 77956067; 77956069; 77956070

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“customized browser icons” otherwise known as favicons7 and, as such, bore “no
relation whatsoever to any particular services”; and 2) a non-distinctive depiction of
the peace symbol fails to function as a mark.8 In support of the refusals, the
examining attorney cited to Sections 1, 2 and 45 of the Trademark Act and the May
2010 version of Trademark Manual of Examining Procedure (TMEP) §§ 904.07(b)
(“Whether The Specimen Shows the Applied-for Mark Functioning as a Mark”) and
1301.02 (“What is a Service Mark”). The examining attorney included relevant
information regarding the submission of substitute specimens to overcome the
refusal.
In the Second Office Action, the examining attorney continued and
maintained the failure to function refusal stating that “even assuming” favicons
“have been recognized as protectable by [the USPTO],” applicant’s mark “does not
function as a service mark because it is a universally recognized symbol (and has
been for over fifty years) that would not be perceived as belonging to any one party
or separating one person’s goods or services from those of another party.”9 The
examining attorney cited to the October, 2010 version of the TMEP § 1202.03
(“Refusal on Basis of Ornamentation”) which provided:

7 “A favicon or Favorites Icon is a small graphic that is associated with a page or Web site.
The favicon allows the Web developer to customize the site in the Web browser, both in the
tab bar that is displayed in many browsers as well as in the bookmarks when a site is
saved. … Most site favicons are designed as a small rendition of their logo or other
branding mechanism.” http://webdesign.about.com/od/favicon, attached to Applicant’s
Response (November 23, 2010).

8 First Office Action (May 30, 2010).

9 Second Office Action (December 27, 2010).
Serial Nos. 77956067; 77956069; 77956070

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The significance of the proposed mark is a factor to consider when
determining whether ornamental matter serves a trademark function.
Common expressions and symbols (e.g., the peace symbol, “smiley
face,” or the phrase “Have a Nice Day”) are normally not perceived as
marks.

The examining attorney continued to provide applicant with information regarding
the submission of a substitute specimen to overcome the refusal.
In the Third Office Action, mailed on August 7, 2011, the examining attorney
made the failure to function refusal final but did not repeat the information
regarding the filing of substitute specimens.
On March 4, 2012, the examining attorney denied applicant’s request for
reconsideration and maintained the refusal that applicant’s proposed mark fails to
function as a mark. The refusal does not mention the manner of applicant’s use,
i.e., does not state that it fails to function as used on the specimen of record. In
addition, the examining attorney rejected applicant’s assertion of acquired
distinctiveness, in the alternative, presented in its February 7, 2012 response.
Citing to the October 11, 2011 version of TMEP § 1212.02(i), the examining attorney
contended that the matter is unregistrable because it is a universally recognized
symbol and a claim of acquired distinctiveness cannot overcome the refusal. The
examining attorney added that if the peace symbol could function as a mark
applicant’s showing of acquired distinctiveness was insufficient. The examining
attorney did not address applicant’s offer to amend its mark to include a color claim,
referenced at the end of its February 7, 2012 response.
Serial Nos. 77956067; 77956069; 77956070

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On May 7, 2012 and August 10, 2012, applicant and the examining attorney
respectively filed briefs in this appeal. On October 1, 2012, applicant filed a request
for remand for consideration of its proposed amendment to the asserted mark and
in support thereof submitted a description of the mark claiming the color purple as
a feature of the mark and a substitute drawing page depicting the mark as shown
below.

In its request for remand, applicant stated that it “believes that its claimed
color makes its Mark inherently distinctive” and that “the color purple is arbitrary
as applied to the peace symbol and in connection with the services identified in the
Applications.”10
On October 2, 2012, the Board granted applicant’s request for remand to the
examining attorney for consideration of its proposed amendment of its mark to
include the color purple. On November 13, 2012, the examining attorney accepted
the amendment to applicant’s mark to include the color purple as a feature of its
mark but maintained the refusal because “the color purple is not unique to
applicant, nor is it unique at all.11 Far from an ‘inherently distinctive’ mark, ...

10 Request for Remand (October 1, 2012) p. 4.

11 We note that the drawing page in the online application file depicts the mark in the color
blue, whereas the description of the mark and the color claim reference the color purple. In
order to claim color as a feature of the mark, the drawing must show the mark in color.
Trademark Rule 2.52(b)(1). 37 C.F.R. § 2.52(b)(1). The description is restricted to “only
Serial Nos. 77956067; 77956069; 77956070

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designs featuring purple peace symbols are common in commerce and are applied to
a wide variety of goods and/or services. ... As a result, consumers do not and would
not view such designs as indicators of source.”12
In support of the maintained refusal based on the amended mark, the
examining attorney cited to the October 2012 issue of the TMEP which included a
new subsection, § 1202.17, providing more detailed information regarding universal
symbols. Specifically, the examining attorney stated that even with the color purple
the “overall impact and impression of the universally-known peace symbol remains
unchanged [because] the color purple is not unique to applicant, nor is it unique at
all…designs featuring purple peace symbols are common in commerce and are
applied to a wide variety of goods and/or services.”13 In support of his position, the
examining attorney attached additional evidence, which includes examples of use of

those colors shown on the drawing.” TMEP § 807.07(a)(1). “When the color shown in the
drawing page in a paper application, or in the digitized image of the drawing in a TEAS
application, is inconsistent with the color claimed in the written application (e.g., the mark
is shown in blue in the drawing, but the color claimed is orange), the drawing controls. The
color claim may be corrected to conform to the drawing. The drawing may not be corrected
to conform to the color claim, unless the examining attorney determines that the
amendment is non-material.” TMEP § 807.07(c). It would appear the difference in the
drawing color and color claim and description would have been grounds to reject the
amendment inasmuch as the only option to correct at that point would have been to amend
the color claim and description to the color blue, which would not be possible because the
drawing depicting the proposed mark in blue does not match the specimen of use depicting
the proposed mark in purple. In view of our decision, we have not remanded the
application to issue an additional refusal on this basis. For purposes of our decision
regarding the proposed mark that claims color, we base our analysis on the proposed mark
claiming the color purple as that is the color shown in the specimens and intended to be
claimed by applicant.

12 Subsequent Final Office Action (November 13, 2012).

13 Id.

Serial Nos. 77956067; 77956069; 77956070

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purple peace symbols. Thereafter, the Board resumed proceedings and allowed
applicant time in which to file a reply brief.14
Based on this history, we consider the refusal that the specimens did not
support service mark use because they were “customized browser icons” to be
withdrawn.15 The issues remaining to be determined are: (1) whether the standard
depiction of the peace symbol fails to function as a mark because it consists only of a
common universal symbol; (2) in the alternative, to the extent that the standard
peace symbol is capable of functioning as a mark, whether applicant’s evidence is
sufficient to establish acquired distinctiveness; and (3) whether the purple peace
symbol is inherently distinctive.16
In view of the above, applicant’s argument that the examining attorney did
not properly withdraw the refusal based on usage as a customized browser icon is
moot. In addition, applicant’s argument that in response to applicant’s request to
accept its claim of acquired distinctiveness and offer to amend its mark in its
request for reconsideration, the examining attorney should have issued a new non-

14 Applicant did not file a reply brief.

15 Because this issue has been withdrawn it is not on appeal, we make no statement as to
whether use of a designation as a favicon is sufficient to support use as a mark, other than
to note the record includes several examples where it appears that the USPTO has accepted
specimens of use that only depict the respective applied-for marks as favicons.

16 Applicant did not argue or move to amend in the alternative that, if not inherently
distinctive the purple peace symbol has acquired distinctiveness. Moreover, although there
is some evidence of use of the purple peace symbol, the declaration attesting to length of use
and exposure to the standard peace symbol does not reference the color and as such does
not establish that it has been used in this color for all of that time. Because applicant’s
request for remand and argument only pertain to its position that the purple peace symbol
is inherently distinctive we reach only that issue; the question of any possible acquired
distinctiveness of the purple peace symbol is not before us.
Serial Nos. 77956067; 77956069; 77956070

9

final Office action rather than simply deny the request for reconsideration, is moot
in view of the subsequent remand by the Board, as noted above. Finally, applicant’s
argument that the examining attorney’s categorization of the refusal as “failure to
function” rather than “lack of distinctiveness” prevented applicant from fully
responding to the refusal, is misplaced. “Lack of distinctiveness” is basically a
subset of “failure to function.” Here, “failure to function” is the appropriate
expression of the refusal, in that the examining attorney is asserting that the
proposed mark is simply the universal peace symbol, and, as such, is unregistrable
without the addition of distinctive matter.
FAILURE TO FUNCTION
Subject matter presented for registration must be a trademark. 15 U.S.C. §§
1051, 1052 and 1127. In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA
1976) (“Before there can be registration, there must be a trademark”). Sections 1, 2
and 45 of the Trademark Act provide the statutory basis for refusal to register on
the Principal Register subject matter that, due to its inherent nature, does not
function as a mark to identify and distinguish an applicant’s goods or services as
required by the statute. Once it is determined that the applied-for designation is
not capable of functioning as a mark within the meaning of the Trademark Act, a
claim of acquired distinctiveness under § 2(f) cannot overcome the refusal. See
TMEP § 1212.02(i) (“If matter … fails to function as a mark, the matter is
unregistrable [and] a claim that the matter has acquired distinctiveness under § 2(f)
as applied to the applicant’s goods or services does not overcome the refusal”). If it
Serial Nos. 77956067; 77956069; 77956070

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is determined that a designation although not inherently distinctive may be capable
of distinguishing source, such a refusal may be overcome by a showing of acquired
distinctiveness. Id.
Typically, a universal symbol fails to function as a mark “because it only
imparts information, conveys an informational message, or provides
ornamentation.” TMEP § 1202.17(a). Universal symbols include designs, icons or
images that are commonly used in an informational manner and convey a widely
recognized or readily understood meaning when displayed in their relevant
context.17 As provided in the TMEP:
The determination as to whether a universal symbol in a mark
functions as a source indicator involves considering the significance of
the symbol, the nature of the symbol’s use in the relevant marketplace,
and the impression created when the mark is used in connection with
the identified goods or services. … Weighing these considerations in
view of the available facts and evidence may lead the examining
attorney to the conclusion that the mark does not serve as a source
indicator, but instead fails to function because it (1) imparts
information about the goods or services, (2) conveys an informational
message (though not necessarily about the goods or services
themselves), or (3) serves only as ornamentation on the goods or
services.18

Universal symbols that convey an informational message fail to function as
source indicators because their significance is based on their underlying message
rather than serving as source identifiers.19

17 TMEP § 1202.17.

18 TMEP § 1202.17(c)(i).

19 TMEP § 1202.17(c)(i)(A).

Serial Nos. 77956067; 77956069; 77956070

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An otherwise unregistrable universal symbol may be “considered registrable
matter if it is highly stylized, if it incorporates elements that are not usually in the
symbol, or if it is integrated with other matter in the mark, and, as a result a
distinctive commercial impression separate and apart from the symbol’s usual
significance is created or a source-indicating unitary whole is formed. ... However,
displaying an accurately depicted universal symbol as a replacement for a letter in
a mark’s literal element normally will not change the symbol’s usual impression (or
create a unitary whole), nor will minor alterations to the symbol, such as slight
stylizations or nondistinctive changes to color scheme or proportions.”20
Standard Peace Symbol
The examining attorney contends that “the applied-for mark does not
function as a service mark because it is a pervasive universally-recognized symbol
(and has been for over fifty years) that would not be perceived as belonging to any
one party or separating one person’s goods or services from those of another party.
… [A]pplicant’s proposed mark is a ubiquitous, non-distinctive icon, instantly
recognizable to the general public in any context.”21 In support of the refusal, the
examining attorney attached printouts from a variety of third-party websites using
and/or discussing the peace symbol. A few examples are reproduced below:
The internationally recognized symbol for peace was originally
designed for the British nuclear disarmament movement … on 21
February 1958 by Gerald Holtom… The symbol was later adopted by
the Campaign for Nuclear Disarmament (CND). It was adopted by
first the 1960s anti-war movement, then the counterculture, and

20 TMEP § 1202.17(b)(ii).

21 E. A. Br. p. 5-6.
Serial Nos. 77956067; 77956069; 77956070

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finally the popular culture of the time. … In Unicode, the peace sign is
U+262E. (www.wikipedia.org, attached to First Office Action (May 30,
2010));

The Peace Symbol … the anti-nuclear emblem or the peace sign is one
of the most widely known symbols in the world. It was invented on the
request of lord [B]ertrand [R]ussell, head of the [B]ritish ‘campaign for
nuclear disarmament’ or CDN … the symbol was quickly adopted in
the US … deliberately never copyrighted, the symbol … is … known
worldwide for peace and non-violence. No one has to pay or to seek
permission before they use it as a symbol of freedom it is free for all
(www.designboom.com, attached to First Office Action (May 30, 2010));

One of the most widely known symbols in the world … . In the United
States and much of the rest of the world it is known more broadly as
the peace symbol. … Although specifically designed for the anti-
nuclear movement it has quite deliberately never been copyrighted.
No one has to pay or to seek permission before they use it. A symbol of
freedom, it is free for all. This of course sometimes leads to its use, or
misuse, in circumstances that CND and the peace movement find
distasteful. It is also often exploited for commercial, advertising or
generally fashion purposes. (www.docspopuli.org, attached to First
Office Action (May 30, 2010));

The Peace Symbol … Few symbols are as recognized and cherished in
the world as the peace symbol. (www.bukisa.com, attached to Second
Office Action (December 27, 2010));

The Peace Symbol – Born in the Boomer Era … The peace symbol has
become the universally recognized icon of peace.
(http://ezinearticles.com, attached to Section Office Action (December
27, 2010)); and

The peace sign symbol is one of the most widely used symbols in the
world … The peace sign is displayed in many places, including social
networking websites like www.myspace.com. You can find a peace
sign symbol online and then copy and paste it on your MySpace page,
or you can make your own using a word processing program like
Microsoft Word. (www.ehow.com, attached to Final Office Action
(August 7, 2011)).

Based on the evidence, the examining attorney concludes that the peace
symbol “has managed to cross borders and span generations and has found
Serial Nos. 77956067; 77956069; 77956070

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relevance in a host of contexts … [and] [f]or applicant to now suggest that
consumers would associate this iconic symbol (with no other additional matter) with
its particular services, after existing for over fifty years in the public domain, is
simply not supported by the evidence of record.”22
The record amply demonstrates and applicant acknowledges that the
proposed mark is the universal symbol that conveys the message of supporting
peace.23 In addition, the record establishes that the peace symbol is commonly used
in virtually any context and always conveys the message of peace.
In view of the above, without the addition of distinctive matter, the peace
symbol cannot serve a source-indicating function and may not be appropriated by
one entity.
In responding to the refusals, applicant made of record several third-party
registrations for peace symbols arguing that the evidence supports the proposition
that the peace symbol is capable of functioning as a mark.24 However, in each

22 E. A. Br. p. 8.

23 App. Br. p. 10 (“the peace symbol is commonly associated with pacifism”); see also TMEP
§ 1202.17(c)(i)(A).

24 Applicant also submitted smiley face registrations which have less relevance to this case
as they comprise a different symbol. In connection with this evidence, applicant references
the unpublished case Loufrani v. Wal-Mart Stores, Inc., 91152145 slip op. at 14 (March 20,
2009) for the proposition that the smiley face symbol may be registrable upon a showing of
acquired distinctiveness. In Loufrani the Board stated:

The evidence shows that the “smiling face” is a common, non-inherently
distinctive design. … Inasmuch as Wal-Mart’s smiling face design is not
inherently distinctive, we must determine if it acquired distinctiveness prior
to Loufrani’s priority date…

Serial Nos. 77956067; 77956069; 77956070

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example the peace symbol contains other distinctive elements. A few examples are
highlighted below.
Registration No. Mark Goods/Services
Reg. No. 3201897

hats, jackets, shirts, and
sweat shirts
Reg. No. 3768888

men’s, women’s, and
children’s apparel
Reg. No. 3010850

Wine
Reg. No. 3928639

bumper stickers, decals,
and decorative decals for
vehicle windows, stickers
Reg. No. 3962378
(mark described
hats, jackets, shirts

We first note that unpublished cases are not binding on the Board. In re Luxuria s.r.o., 100
USPQ2d 1146, 1151 n.7 (TTAB 2011); TBMP § 101.03. In addition, the mark involved in
that case, (claiming the color yellow), contains the added design elements of
shading and tilting that suggest movement. While the additional design elements may be
minimal, the symbol is not displayed in the usual manner. See TMEP § 1202.17(b)(ii).
Serial Nos. 77956067; 77956069; 77956070

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as “the stylized letter ‘C.’
Inside the letter ‘C’ is the
peace symbol.”)
Reg. No. 38337000

human apparel, namely
shirts, sweatshirts,
sneakers and shoes

Finally, applicant claims ownership of Registration No. 3856547, filed on
February 24, 2010 and issued on October 5, 2010, for the peace symbol design
for goods identified as “Downloadable software for use in viewing and posting
classified advertising, consumer product and service information, product and
service rental information and advertising, and consumer information on a wide
variety of topics of general interest to the consuming public; downloadable software
for use in accessing electronic mail services and for electronic transmission of
messages, data and images.” The mark is described as “a peace symbol” and color is
not claimed as a feature of the mark. Applicant argues that its prior registration
demonstrates secondary source. However, because we find the accurate depiction of
the peace symbol to be unregistrable it cannot be considered as a secondary source
or acquire distinctiveness based on its prior registration. While the USPTO strives
for consistency, “[t]he Board must decide each case on its own merits ... Even if
some prior registrations had some characteristics similar” to the instant
Serial Nos. 77956067; 77956069; 77956070

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applications, such decisions in other application files are not binding on the Board.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Purple Peace Symbol
With regard to the added color claim, the examining attorney argues that the
amendment “is merely a ‘nondistinctive change[] to [the] color scheme’ of the mark.
The overall impact and impression of the universally-known peace symbol remains
unchanged. Even as applied to the peace symbol, the color purple is not unique to
applicant, nor is it unique at all. … [D]esigns featuring purple peace symbols are
common in commerce and are applied to a wide variety of goods and/or services. As
a result, consumers do not and would not view such designs as indicators of
source.”25 Below are a few examples of purple peace signs used in a variety of
contexts submitted by the examining attorney:
26

25 Subsequent Final Office Action p. 3.

26 Various items a displaying purple peace sign offered for sale at www.peaceproject.com.

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27
28

27 Purple peace sign used as part of an embellished contact box design offered for use at
www.zingerbug.com/contact_table.

28 http://skreened.com.

Serial Nos. 77956067; 77956069; 77956070

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29
The record includes evidence of the peace symbol in its usual form used
ubiquitously in the color purple in a variety of contexts. We find that the purple
color claim is not sufficiently distinctive to transform the universal peace symbol
into an inherently distinctive mark, even as to applicant’s specific services.
In conclusion, the record establishes that the standard peace symbol is a
universal symbol that retains its message in all contexts, including applicant’s
services. In view thereof, it fails to function as a mark and is incapable matter.
Because we find that the standard peace symbol does not function as a mark and is
unregistrable we do not address applicant’s arguments that there is sufficient
acquired distinctiveness to allow registration under Section 2(f). TMEP § 1212.02(i)
(“[W]here the examining attorney has determined that matter sought to be
registered is not registrable because it is not a mark within the meaning of the
Trademark Act, a claim that the matter has acquired distinctiveness under § 2(f) as
applied to the applicant’s goods or services does not overcome the refusal.”) Finally,
the record establishes that the standard peace symbol rendered in the color purple
is not inherently distinctive.

29 http://wanelo.com.
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Decision: The refusal to register under Sections 1, 2 and 45 of the
Trademark Act is affirmed in each application.