NEMS INC.Download PDFTrademark Trial and Appeal BoardMar 26, 2019EX (T.T.A.B. Mar. 26, 2019) Copy Citation Mailed: March 26, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re NEMS INC. _____ Serial No. 87865776 _____ Vincent G. LoTempio of Kloss Stenger & LoTempio, for NEMS Inc. Lyal Fox, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Wolfson, Shaw, and Hightower, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: NEMS Inc. (“Applicant”) seeks registration on the Principal Register of the standard character mark WE SELL MATTRESSES FOR LESS...A LOT LESS for “Retail markets featuring a variety of mattresses, mattress covers, bed frames, box This Opinion is Not a Precedent of the TTAB Serial No. 87865776 - 2 - springs, delivery and pickup services and related sleep products; Retail mattress stores” in International Class 35.1 The Trademark Examining Attorney refused registration of Applicant’s proposed mark under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, and 1127, on the ground that the applied-for mark is unregistrable because it is merely an informational slogan. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. I. Applicable Law A service mark is “a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” Trademark Act Section 45, 15 U.S.C. § 1127. The fundamental function of a service mark is to identify the source of services in commerce and to distinguish them from the services of others. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. § §1051, 1052, 1053 and 1127. From this premise it directly follows that subject matter presented for registration as a service mark must function as such; that is, if potential purchasers do not perceive a proposed mark as identifying a single source of origin (whether or not the identity of that source is known), the mark may not be registered. In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976) (“Before there can be registration, there must be a trademark.”). 1 Application Serial No. 87865776 was filed on April 6, 2018 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s allegation of June 30, 2008 as its date of first use and first use in commerce. Serial No. 87865776 - 3 - Not every word, phrase, or marketing slogan identifies and distinguishes one brand from another. Informational phrases or slogans commonly used in advertising or promotions are not typically perceived as service marks because they convey commonplace information about the services that all suppliers need to convey to remain competitive. See, e.g., In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (CCPA 1960) (GUARANTEED STARTING found to be ordinary words that convey information about the services, not a service mark for the services of “winterizing” motor vehicles); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA used on electric shavers is not used as a trademark, but merely tells the buyer the place the product was made). Derivatives or variations of widely used messages also fail to function as marks if they convey the same or similar type of information or sentiment as the original wording. In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986) (finding BRAND NAMES FOR LESS failed to function as a mark based evidence of widespread use of similar marketing phrases, noting that “[t]he fact that applicant may convey similar information in a slightly different way than others is not determinative.”). The critical question in determining whether a particular designation would be perceived by the relevant public as indicating the source of the services or merely as providing information about the source or the services, is the commercial impression it makes on the relevant public. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998) (“A critical element in determining whether a term or phrase is a Serial No. 87865776 - 4 - trademark is the impression the term or phrase makes on the relevant public.”). Evidence of the public’s understanding of a term includes dictionary or encyclopedia entries showing the meaning or significance of wording, and materials showing Applicant’s manner of use and the manner of use by third parties (e.g., Applicant’s specimens of use, website pages, social-media pages, product fact sheets, Internet excerpts where sufficient text surrounding the search term(s) is provided to enable the context to be understood, and promotional and advertising materials). See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (any competent source suffices to show the relevant public’s understanding of a contested term, including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers, and other publications); see also In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Internet evidence is generally admissible and may be considered for purposes of evaluating a trademark.”). II. The Examining Attorney’s Arguments and Evidence The Examining Attorney argues that Applicant’s mark WE SELL MATTRESSES FOR LESS...A LOT LESS “merely conveys information about the applicant’s services, namely, that their retail markets and retail mattress stores sell mattresses for less than the usual price.” 9 TTABVUE 4. Because consumers “are accustomed to seeing the phrase WE SELL _____ FOR LESS…A LOT LESS used by many different sources to convey the same information message,” the phrase is “a common message that is not specific to any one source.” Id. Serial No. 87865776 - 5 - In support, the Examining Attorney submitted copies of two sets of third-party websites utilizing slogans incorporating the phrase “a lot less.”2 One set of web pages shows use of similar phrases, such as “a lot less” and “for less” for mattresses and furniture. The other set of third-party websites uses the identical phrase “We Sell _____ For Less…A Lot Less” in unrelated industries (substituting the appropriate product name for the term “mattresses”). In addition, the Examining Attorney submitted a web page from “dexknows” in which an online seller, The Sleeping Giant, advertises low-priced mattresses using the exact phrase “We Sell Mattresses For Less…A Lot Less!”3 Finally, the Examining Attorney submitted an Instagram post wherein the phrase “We sell mattresses for less, a lot less” is also used. These two latter uses have been challenged by Applicant, the first as being from a mattress store that is no longer open,4 and the second as being a direct reference to Applicant.5 No record evidence supports Applicant’s supposition about either third-party; however, even discounting these latter two uses does not change the result in this case. Examples of the first set, websites that offer mattresses and furniture, using similar slogans are: 2 See July 26, 2018 Office Action at TSDR 4-11 and August 9, 2018 Final Office Action at TSDR 5-10. All citations to the TSDR database are to the downloadable PDF versions of the documents. 3 At https://www.dexknows.com/business _profiles/the_ sleeping_giant, attached to July 26, 2018 Office Action at TSDR 4. 4 February 8, 2018 Response at TSDR 15. 5 Id. at TSDR 16 and 7 TTABVUE 7. Serial No. 87865776 - 6 - • MOR Furniture at www.morfurniture.com6 • Beds for Less at https://awholelotless.com7 6 July 26, 2018 Office Action at TSDR 6. 7 Id. at TSDR 9. Serial No. 87865776 - 7 - • Red Tag at http://redtag4u.com8 The second group of third-party web pages illustrate the conventional, everyday use of the catch-phrase “we sell ___ for less … a lot less” that competitors in various industries employ to let customers know they offer discount prices. For example: 8 Id. at TSDR 11. Serial No. 87865776 - 8 - • Affordable Mobility Vans, at affordablemobilityvans.com:9 • DAC Merchandise at http://dacmerch.com:10 9 Attached to August 9, 2018 Final Office Action at TSDR 5. 10 Id. at TSDR 6. Serial No. 87865776 - 9 - • MDS Associates, at https://www.mdsassociates.com:11 • Eden Pub NY, at https://edenpubny.com:12 These examples show that the competitive need to advertise one’s products at lower-than-average prices frequently takes the form of a slogan using “for less,” and more specifically, that it is common to employ the phrase WE SELL ____ FOR LESS...A LOT LESS. III. Applicant’s Evidence and Arguments Applicant argues that its mark is not a common phrase used “merely in advertising copy to describe or inform consumers of a feature of the Appellant’s 11 Id. at TSDR 7. 12 Id. at TSDR 8. Serial No. 87865776 - 10 - services. Instead, it is printed boldly, prominently, in large lettering, and without surrounding text on Appellant’s storefronts, buildings, vehicles, banners, and advertisements.” 7 TTABVUE 8-9. Thus, Applicant contends, “[c]onsumers are likely to, and actually do, perceive the mark as a source-indicating trademark.” Reply Brief, 10 TTABVUE 2. The list of third-party marks that Applicant submitted to support its assertion that the USPTO has registered similar marks, while of record, is of very little probative value.13 The only information provided is the mark and its registration or application number. Only one of the marks is listed with a registration number; the others are all identified by application numbers only. No further information is provided for the single registration (for the mark CELL4LESS), and third-party applications are evidence only of the fact that they have been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Accordingly, the list has no probative value. Applicant also submitted a list of links to YouTube addresses that Applicant states is “video advertisement evidence.” 4 TTABVUE 5. The Board does not take judicial notice of asserted content that may be found were it to follow any such links, which the Board also does not do. See In re Planalytics, 70 USPQ2d 1453, 1458 (TTAB 2004) (providing a link to a website does not suffice to put information in the record because of the transitory nature of the information available through the link). Accordingly, the list also has no probative 13 List at August 3, 2018 Response to Office Action at TSDR 18-19; Examining Attorney’s reference without objection at August 9, 2018 Final Office Action at TSDR 3. Serial No. 87865776 - 11 - value. The Google “hit list” provided by Applicant, 4 TTABVUE 24, has no real probative value either; although the excerpts show that a search for the exact phrase sought to be registered developed references primarily identifying Applicant, there is no report showing results for comparable searches using similar phrases such as “for less” or “a lot less.” During the prosecution of its application, applicant submitted the following specimens of use: Serial No. 87865776 - 12 - Applicant also submitted additional examples of its use of its mark: • On a banner14 14 August 3, 2018 Response to Office Action at TSDR 7. Serial No. 87865776 - 13 - • On a page from Applicant’s website15 • In a print advertisement16 15 Id. at TSDR 12. 16 Id. at TSDR 13. Serial No. 87865776 - 14 - • And in storefront signage.17 Applicant argues that its proposed mark is registrable because, as shown, it is set apart from other matter in advertising, and has been prominently displayed and actively promoted. However, the mere fact that an applicant’s informational phrase appears on its specimens and in its advertising, even separate and apart from other indicia which appear on them, does not make it a trademark. D.C. One Wholesaler, 120 USPQ2d 1710, 1716 (TTAB 2016) (“Because the nature of the phrase [I ♥ DC] will be perceived as informational…it does not create the commercial impression of a source indicator, even when displayed on a hangtag or label.”); see also In re First Union Nat’l Bank, 223 USPQ 278, 280 (TTAB 1984) (finding, in dicta, that it would be “virtually impossible” to use such “commonly used phrases as ‘Sale Today’ or ‘We 17 4 TTABVUE 8. Serial No. 87865776 - 15 - Sell at Low Prices’ in a way that would be perceived as identifying and distinguishing services”). Applicant relies on In Re Michelin N. Am., Inc., Serial No. 85077031, 2015 WL 5675633 (TTAB Sept. 11, 2015), an unpublished decision in which the Board found that the proposed mark 1-800-TIRE-911 was registrable and properly used on the applicant’s specimens in a trademark manner. The case is distinguishable. In Michelin, the Board recognized that vanity telephone numbers are not per se unregistrable, and found the “distinctive mnemonic” TIRE-911 resulted in the mark as a whole having trademark significance. In other words, the Board found that consumers would not immediately perceive the designation only as a telephone number, but would see TIRE-911 in the mark as distinctive, and thus as a whole the mark 1-800-TIRE-911 was more than merely informational. Here, the wording of the proposed mark merely tells a prospective purchaser that Applicant sells mattresses at a discount. The additional use of ellipsis and alliteration (“less…a lot less”) are non-distinctive features unlike TIRE-911; they are commonplace and do not add a distinctive element to the mark. Even if we consider the size and location of the proposed mark as setting it apart from the other marks and wording on Applicant’s specimens and use evidence, we note it is typically subordinate to the wording “XTREME DISCOUNT MATTRESS.” Likewise, Applicant’s intent that its slogan function as a trademark does not make it so. “Mere intent that a term function as a trademark is not enough in and of itself, any more than attachment of the trademark symbol would be, to make a term Serial No. 87865776 - 16 - a trademark.” In re Remington Prods. Inc., 3 USPQ2d at 1715; see also Apollo Medical Extrusion Techs., Inc. v. Medical Extrusion Techs., Inc., 123 USPQ2d 1844, 1855 (TTAB 2017); In re Vertex Group LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) (“[M]ere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself.”); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980) (“Wishing does not make a trademark or service mark be.”). Thus, although Applicant’s president, George Costello, attested to Applicant’s having used the designation since 2008 and spent over $2.6 million in advertising on television, radio, in print ads and on storefronts, store interiors, company vehicles, and its website and social media platforms, 4 TTABVUE 13-15, evidence of even extensive use (and there is no discussion in the record as to whether the evidence would be sufficient to establish acquired distinctiveness) cannot turn an informational slogan into a registrable service mark. “Matter that does not operate to indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered, regardless of claims of acquired distinctiveness or the register on which registration is sought.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1202.04(d) (October 2018); see also In re Remington Prods., Inc., 3 USPQ2d at 1715 (affirming a failure-to- function refusal and denying a claim of acquired distinctiveness for the mark PROUDLY MADE IN THE USA for electric shavers and parts thereof, noting that applicant’s “substantial sales and advertising of its product . . . does not provide recognition by the public of the subject slogan as a trademark”); D.C. One Wholesaler, Serial No. 87865776 - 17 - 120 USPQ2d at 1717 (granting petition to cancel a registration on the Supplemental Register because the mark failed to function as a trademark); In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) (“Long use of a slogan which is not a trademark and would not be so perceived does not, of course, transform the slogan into a trademark.”); TBMP § 1212.02(i). IV. Summary In summary, we find that the manner in which the applied-for mark is used on the specimens of use is not indicative of trademark use. Applicant’s slogan WE SELL MATTRESSES FOR LESS...A LOT LESS for “retail markets featuring a variety of mattresses, mattress covers, bed frames, box springs, delivery and pickup services and related sleep products; retail mattress stores” is merely an ordinary, self- laudatory statement that Applicant sells its merchandise at lower prices than normal retail. No single entity is entitled to appropriate to the exclusion of others, the right to use such common phrasing in order to inform its clients that the goods it sells are less expensive than average. Decision: The refusal to register Applicant’s proposed mark WE SELL MATTRESSES FOR LESS...A LOT LESS under Trademark Act Sections 1, 2, 3, and 45 is affirmed. Copy with citationCopy as parenthetical citation