Eagle Crest, Inc.

Trademark Trial and Appeal Board

Aug 10, 2010

No. 77114518 (T.T.A.B. Aug. 10, 2010)

Mailed: August 10, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Eagle Crest, Inc.
________

Serial No. 77114518
_______

Steven R. Scott, Esq. for Eagle Crest, Inc.

Chris Wells, Trademark Examining Attorney, Law Office 106 (Mary
I. Sparrow, Managing Attorney).
_______

Before Quinn, Bucher and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Eagle Crest, Inc., has filed an application to
register the standard character mark ONCE A MARINE, ALWAYS A
MARINE on the Principal Register for goods identified, as
amended, as "clothing, namely hats, shirts, undergarments,
swimsuits, sweatshirts, sweaters, jackets, coats, gloves, scarfs
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77114518
2
[sic], belts, headbands, wristbands, pants, shorts, skirts,
dresses, overalls, socks, stockings, and leggings," in Class 25.1
The trademark examining attorney ultimately refused
registration of the mark under Sections 1, 2 and 45 of the
Trademark Act on the ground that the designation is merely
informational matter and does not function as a mark.2
When the refusal was made final, applicant appealed. Briefs
have been filed.
As a preliminary matter, we address applicant's concerns
raised in its brief regarding the finality of issue on appeal.
In the fifth Office action dated January 21, 2009, the examining
attorney refused registration citing Sections 1, 2 and 45 of the
Act and stating that "the applied-for mark, as used on the
specimen of record, is merely informational matter; it does not
function as a trademark to identify and distinguish applicant's
goods from those of others...." The examining attorney argued
that the mark "is merely informational matter because the goods
as worn tell the public that the wearer is either a current or a

1 Application Serial No. 77114518, filed February 23, 2007, based on an
allegation of first use and first use in commerce on January 7, 1992.

2 The examining attorney initially refused registration of the mark
under Sections 1, 2 and 45 of the Act as mere ornamentation. Following
the final refusal on this basis and a request for reconsideration by
the applicant, the examining attorney issued a refusal under Section
2(a) of the Act based on a false suggestion of a connection with the
United States Marines. The Section 2(a) refusal was subsequently
withdrawn, and the examining attorney reinstated the refusal under
Sections 1, 2 and 45, this time based on the informational nature of
the mark.
Serial No. 77114518
3
former United States Marine." Following applicant's response to
the refusal, the examining attorney made the refusal final, again
on the ground that "the matter presented for registration is
purely informational," but this time arguing that "the slogan is
in general use and will not be seen as an indicator of source in
applicant."
Applicant contends that the examining attorney in the final
refusal "substantially changed the basis for rejection stated in
the prior office action, while adding a variety of putative
grounds for rejection and cites not directly related to the
subject at hand." Brief, p. 12.
We recognize that this must have been a frustrating
prosecution for applicant, but we do not agree that the final
refusal was premature. While the examining attorney may have
made different arguments and cited to different cases in support
of the final refusal, the basis for the refusal did not change.
The examining attorney, as well as the applicant, is entitled to
raise new arguments and/or additional case citations that pertain
to the ground for a refusal. Cf. TBMP §1217 (2d ed. rev. 2004).
We also note in this regard that the Board need not find that the
examining attorney's rationale was correct in order to affirm the
refusal to register, but rather may rely on a different
rationale.

Id; In re AFG Industries Inc., 17 USPQ2d 1162, 1163
(TTAB 1990); In re Avocet, Inc., 227 USPQ 566, 567 (TTAB 1985);
Serial No. 77114518
4
and In re D.B. Kaplan Delicatessen, 225 USPQ 342, 343 n.2 (TTAB
1985).
As an additional preliminary matter, we note applicant's
argument made during prosecution and in its brief that its search
of the Office records retrieved hundreds of registrations and
applications for marks which include the term "marine(s)," and
applicant listed several of them, including a prior registration
allegedly owned by applicant for the mark GOT MARINES?. The mere
listing of third-party registrations and/or applications, without
copies or electronic printouts thereof, is insufficient to
properly make them of record. See In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 n.3 (TTAB 1994). However, while the examining
attorney never objected to this evidence, and thus, we have
considered the listing, it is of no probative value. We have no
information as to the goods in the listed registrations and
applications, we are not privy to the records in the files of
those cases, and, in any event, the Board is not bound by the
actions of examining attorneys in allowing those marks for
registration. It has been said many times that each case must be
decided on its own facts. See In re Nett Designs Inc., 236 F.3d
139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We turn then to the question of whether ONCE A MARINE,
ALWAYS A MARINE functions as a trademark. Section 45 of the
Trademark Act defines a "trademark" in relevant part as "any
Serial No. 77114518
5
word, name, symbol, or device, or any combination thereof used by
a person...to identify and distinguish his or her goods...from
those manufactured or sold by others and to indicate the source
of the goods, even if that source is unknown." It is well
settled that "not every designation that is placed or used on or
in connection with a product necessarily functions...as a
trademark for said product; not every designation adopted with
the intention that it performs a trademark function and even
labeled as a trademark necessarily accomplishes that purpose; and
there are certain designations that are inherently incapable of
functioning as trademarks to identify and distinguish the source
of the products in connection with which they are used."
American Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ
149, 154 (TTAB 1973).
The critical inquiry in determining whether a designation
functions as a mark is how the designation would be perceived by
the relevant public. To make this determination we look to the
specimens and other evidence of record showing how the
designation is actually used in the marketplace. See In re Volvo
Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998).
Slogans and other terms 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. See In re
Serial No. 77114518
6
Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
1999). The more commonly a phrased 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.
See Reed v. Amoco Oil Co., 611 F.Supp. 9, 225 USPQ 876, 877 (M.D.
Tenn. 1984).
As applicant admits, the evidence submitted by the examining
attorney "very clearly shows" that the phrase ONCE A MARINE,
ALWAYS A MARINE is "a motto associated with and used by and about
Marines by them and their admirers."3 Brief, p. 14. Indeed, the
examining attorney's search for the slogan on the Google website
retrieved nearly 3 million hits. The examining attorney
submitted pages from a number of websites, some excerpts of which
are set forth below.
Welcome to Darby's Desk.
These web pages are dedicated to the men and women
who have served and are serving in The United States
Marine Corps.
"Once a Marine!"
[a poem written in 1942, concluding]:
Once a Marine, Always a Marine!
Darbythorpe.homestead.com

Marines Forever.com
A community for past, present & future Marines
Once A Marine, Always A Marine!
...With Marines Forever, you can easily create your
own web page where you can upload pictures, post blog

3 While applicant argues that the slogan also refers to the marines of
foreign countries, we are only concerned with the perception of
consumers in the United States. We have no doubt that to most
consumers in the United States, the slogan would refer to the United
States Marines.
Serial No. 77114518
7
entries and much more.... It is the perfect place to
connect with Marine Corps buddies.
Marinesforever.com

It's Your Times [features an article entitled "Once a
Marine, Always a Marine"]:
Fighting the Good Fight
When the call comes for our United States Marines to
put their lives on the line, they do so,
unconditionally...
Itsyourtimes.com

MARINES The Few. The Proud
...the Corps ethos, "Once a Marine, Always a Marine.
"... There's a saying, 'once a Marine, always a
Marine,' well that's what (we'll) always be," Manary
said...
Marines.mil/units

There is no dispute that the phrase ONCE A MARINE, ALWAYS A
MARINE is an old and familiar Marine expression, and as such it
is the type of expression that should remain free for all to use.
In fact, the evidence shows that the slogan is commonly used in
an informational and ornamental manner on t-shirts and various
other retail items produced and/or sold by others. For example,
the website usmcstore.com offers shirts and t-shirts for sale
imprinted with various Marine expressions, including "Once a
Marine Always a Marine." Other retail websites show decorative
use of the phrase on bumper stickers, caps, sweatshirts, t-shirts
and hoodies, posters and calendars. See, e.g., bumpertalk.com;
bumperstickers.cafepress.com; amazon.com; scarmy.com;
cafepress.com. The function of a trademark is to identify a
single commercial source. Because consumers would be accustomed
Serial No. 77114518
8
to seeing this phrase displayed on clothing items from many
different sources, they could not view the slogan as a trademark
indicating source of the clothing only in applicant. It is clear
that clothing imprinted with this slogan will be purchased by
consumers for the message it conveys. Applicant is not entitled
to appropriate the slogan to itself and thereby attempt to
prevent competitors from using it to promote the sale of their
own clothing. It has been noted that "as a matter of competitive
policy, it should be close to impossible for one competitor to
achieve exclusive rights" in common phrases or slogans. 1
McCarthy on Trademarks and Unfair Competition § 7:23 (4th ed.
2010).
The manner of use on applicant's specimens as well as its
other materials would likely reinforce the perception of ONCE A
MARINE, ALWAYS A MARINE as merely an informational statement.
The specimens consist of a photograph of a hat, displaying ONCE A
MARINE, ALWAYS A MARINE in large letters across the crown of the
hat with the wording SEMPER FI and USMC appearing on the back,
and a photograph of a shirt, reproduced below, showing the phrase
displayed on the front breast pocket area of the shirt.
Serial No. 77114518
9

While the slogan is not exactly emblazoned across the shirt
as the examining attorney contends, it is nonetheless prominently
displayed in a manner that can be easily seen and read. It is
clear from the evidence that many consumers want to openly
express their support or admiration for the Marines or their
association with the Marines, and applicant's shirts and hats
accomplish that purpose. Thus, as used on applicant's clothing,
the slogan would be viewed as an informational message rather
than as a trademark identifying the source of applicant's
clothing.
As additional evidence of use, applicant submitted screen
shots from its website, eaglecrest.com, including a page offering
a "blank" t-shirt for sale under the heading "ITEM NO: ONCE A
Serial No. 77114518
10
MARINE BLANK TEE." The applied-for mark appears nowhere on this
page. Another page from the website is reproduced below.

The slogan is displayed at the top of the page followed by
"TM," and it appears on a shirt and various caps in a manner
similar to the display on the specimens. It also appears in a
listing along with eight other military or patriotic messages,
where consumers are invited to choose the message, such as ONCE A
MARINE, ALWAYS A MARINE, that they would like to have imprinted
Serial No. 77114518
11
on their clothing. Used in this manner, the slogan functions
solely to convey an informational message on the shirt. It would
not be viewed as a trademark identifying the source of the shirt.
We also note that use of the TM notation does not make this
otherwise unregistrable term a trademark. Volvo Cars of North
America Inc., supra at 1461.
Applicant argues that despite the fact that ONCE A MARINE,
ALWAYS A MARINE is used widely as a slogan by Marines and their
admirers, it is not a phrase of "universal applicability and
usage" like DRIVE SAFELY or WATCH THAT CHILD. Brief, p. 13.
However, the examining attorney has shown prima facie that the
slogan would be perceived solely as informational matter rather
than as a trademark and applicant has submitted no evidence to
rebut that showing.
Applicant also argues that this case is different from the
cases cited by the examining attorney to support the refusal such
as In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056
(Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory
and descriptive as applied to beer and ale that it is
unregistrable); In re Aerospace Optics, Inc., 78 USPQ2d 1861
(TTAB 2006) (SPECTRUM fails to function as a mark for illuminated
pushbutton switches, as it merely informs purchasers of the
multiple color feature of the goods); In re Schwauss, 217 USPQ
Serial No. 77114518
12
361 (TTAB 1983) (FRAGILE for labels and bumper stickers is an
informational statement rather than a source identifier).
We agree that ONCE A MARINE, ALWAYS A MARINE as applied to
clothing is intrinsically different from slogans in the cited
cases in that it does not impart any information about the goods
themselves. However, that distinction is not legally
significant. The primary function of this familiar Marine slogan
as shown by the evidence of use by the public, by other retailers
and also by applicant, is nonetheless to convey information, that
is, to express support, admiration or affiliation with the
Marines. We believe the facts in this case are more analogous to
those in In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984) where
the Board held that the phrase WATCH THAT CHILD for construction
material would be perceived merely as an expression of general
concern about child safety that does not function as mark; and In
re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993) holding that
the phrase BLACKER THE COLLEGE SWEETER THE KNOWLEDGE appearing on
t-shirts "would be viewed merely as an informational message or
slogan devoid of trademark significance."
Finally, applicant argues that other "common 'United States
Marine' expressions" such as "'HOOAH!' and 'GUNG-HO!'" are
"trademarked for various products without being accused of being
either identifiers for the U.S. Marines, etc. or being 'merely
Serial No. 77114518
13
informational' as identifying product users as being past or
present U.S. Marines...."
It is not clear what applicant means by "trademarked," but
in any event applicant has submitted no evidence to support this
assertion. Moreover, the question of whether other mottos or
slogans would be registrable is not before us and, as we noted
earlier, has no bearing on the question of whether this
designation is registrable.
We find that ONCE A MARINE, ALWAYS A MARINE would not be
perceived as a trademark to identify and distinguish applicant's
goods from the like goods of others.
Decision: The refusal to register under Sections 1, 2 and
45 of the Trademark Act is affirmed.