Steven Schalk

Trademark Trial and Appeal Board

Oct 11, 2019

86183499 (T.T.A.B. Oct. 11, 2019)

Mailed: October 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Schalk
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Serial No. 86183499

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Steven Schalk, pro se.1

Alison F. Pollack, Trademark Examining Attorney, Law Office 106
Mary Sparrow, Managing Attorney.
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Before Zervas, Ritchie, and Heasley,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Steven Schalk (“Applicant”) seeks registration on the Principal Register of
the mark shown below for “bumper stickers,” in International Class 162:

1 Applicant was represented by counsel through the completion of briefing.
2 Application Serial No. 86183499, filed on February 4, 2014, based on Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), asserts dates of first use and first use in
commerce on January 14, 2014.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 86183499

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The description reads:

The mark consists of two concentric circles outlined in red next
to a phrase. The largest concentric circle features a white filler
with the wording "NATIONAL SECURITY AGENCY" in black
curving along the top of the inner circle and "UNITED STATES
OF AMERICA" in black curving along the bottom. Each phrase
has a small, silver star separating it from the previous phrase.
Within the smaller circle is an eagle, wings open, set against a
blue background holding a silver key with a dark gray shade in
its talons. The eagle is colored in brown with black striping, gold
feet with black striping, a gold beak with a white face and black
eye. The center of the eagle features a shield with a blue vertical
bar above red and white alternating vertical stripes. Crossing
the entirety of the symbol is a red "no" symbol with the letters
"NSA" printed on top in black. To the right of the symbol is the
phrase "NOT SAFE ANYMORE" in black font.

The Trademark Examining Attorney has refused registration under
Sections 1, 2, and 45 of the Trademark Act on the ground that the applied-for
mark as used on the specimen of record is merely a decorative or ornamental
feature of the goods and does not function as a trademark to indicate the
source of Applicant’s goods and to identify and distinguish them from others.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.3 For the reasons discussed herein,

3 The Examining Attorney made final an additional ground for refusal under Section
2(b), which was withdrawn on appeal. The Examining Attorney also made final a
refusal under Section 2(a) of the Trademark Act on the ground that the applied-for
mark consists of or includes matter which may disparage or bring into contempt or
disrepute person, institutions, beliefs, or national systems. Due to this refusal, the
Board suspended this appeal pending consideration and decision by the Supreme
Court in Matal v. Tam, 137 S.Ct. 1744, 122 USPQ2d 1757 (2017). Pursuant to the
Court’s ruling in that case, the Section 2(a) disparagement refusal is now moot.
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we affirm the refusal under Sections 1, 2, and 45 that that the applied-for
mark is merely ornamental and fails to function as a mark.
I. Mere Ornamental Matter Lacking Trademark
Significance

As noted, the Examining Attorney has refused registration under Sections
1, 2, and 45 on the ground that the applied-for mark as used on the specimen
of record is merely an ornamental feature of the goods that does not function
as a trademark. The question we must consider is whether the public would
perceive the applied-for mark as an indication of source. See In re Lululemon
Athletica Canada Inc., 105 USPQ2d 1684 (TTAB 2013).
In evaluating whether Applicant’s applied-for mark is merely
ornamental, we evaluate the significance of the applied-for mark to the public
in relation to the identified goods. In re Pro-Line Corp, 28 USPQ2d 1141,
1142 (TTAB 1993). As the Board observed in Pro-Line, “Not every word,
name, phrase, symbol or design, or combination thereof which appears on a
product functions as a trademark. … Mere intent that a phrase function as a
trademark is not enough in and of itself to make it a trademark.” Id. In that
decision, the Board found that the slogan BLACKER THE COLLEGE
SWEETER THE KNOWLEDGE appearing on t-shirts “essentially conveys a
message or opinion,” that “would be viewed merely as an informational
message or slogan devoid of trademark significance.” Id.
The Board may look to the “size, location, dominance, and significance of
the alleged mark” in order to determine whether it is primarily an
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ornamental slogan, the principal function of which is to convey a message,
rather than to indicate a source. See In re Right-On Co., 87 USPQ2d 1152,
1156 (TTAB 2008); In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988).
As the Examining Attorney observes, Applicant’s applied-for mark, as shown
on the specimen, comprises the entirety of the display on the identified
“bumper stickers.” 12 TTABVUE 14.

Applicant argues that its applied-for mark is not merely ornamental “in the
sense that it is capable of identifying the Applicant as the source of the goods
in question….” 10 TTABVUE 12. Applicant goes on to say:
Bumper stickers with Applicant’s mark may be ornamental, yet
remain capable of distinguishing the secondary source of the
goods just as t-shirts with NYU logos on the front are capable of
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distinguishing their source, if not the original manufacturer.
TMEP § 1202.03.

In the instant case, as the Applicant’s trademark is coined it is
likely that it would be perceived as a source identifier and not
merely ornamental akin to the t-shirt from a university or
otherwise.
Id.

Here, the applied-for mark essentially conveys a message or opinion that
consumers are likely to perceive as informational rather than source-
identifying. See In re Hulting, 107 USPQ2d 1175 (TTAB 2013) (Political
slogan “No More RINOs!” was not registrable as a trademark for bumper
stickers, t-shirts and political pins. RINO is an abbreviation for “Republican
in Name Only,” a slogan of the conservative wing of the Republican Party.)
As we observed in that case, “[C]onsumers will not perceive this wording as
applied to applicant’s goods as a source indicator pointing uniquely to
applicant. … [W]e find that applicant's proposed mark as used on the
specimens conveys a political slogan devoid of source-identifying significance
and therefore fails to function as a trademark.” Id. at 1179, 1181. See also In
re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (THINK GREEN and
design not registrable because it would be perceived only as an informational
slogan encouraging environmental awareness and not as a trademark for
weather stripping and paper products); In re Tilcon Warren, Inc., 221 USPQ
86 (TTAB 1984) (safety slogan WATCH THAT CHILD, used on bumper of
construction vehicles, was not used as a trademark for “construction
material.”) There too, the Board noted that the applied-for mark was really
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an informational slogan, and would be perceived as such, and thus did not
function as a mark.
Although we find that Applicant’s applied-for mark is not inherently
distinctive, our case law has explained that an ornamental design may, in
some cases, inform the purchasing public of “the source of the [goods], not the
source of the manufacture, but the secondary source.” See In re Olin Corp.,
181 USPQ 182, (TTAB 1973) (referring to such wording or designs as
indicating “secondary source.”). In the context of an ornamentation refusal,
“’secondary source’ simply means that the use of the design or words would
be perceived by the consumer as an indicator of source due to the applicant’s
prior use or registration of the mark for other goods or services (not the
applied-for goods).” In re Lululemon Athletica Canada, 105 USPQ2d at 1690
n. 4. Despite the arguments in his brief, Applicant has not offered any
examples of prior use or registration of the applied-for mark that could be
used to indicate secondary source. As such, the exception does not apply here.
II. Conclusion

As the Federal Circuit has made clear, “The Trademark Act is not an act
to register mere words, but rather to register trademarks. Before there can be
registration, there must be a trademark, and unless words have been so used
they cannot qualify.” In re Bose Corp, 546 F.2d 893, 192 USPQ 213, 215
(CCPA 1976) (cites omitted). The applied-for mark does not meet this
fundamental standard. Since we find that consumers are likely to perceive
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Applicant’s applied-for mark as informational rather than source-identifying,
and since Applicant has not submitted any evidence of acquired
distinctiveness or secondary source, we affirm the refusal to register under
Sections 1, 2, and 45 on the ground that the applied-for mark as used on the
specimen of record is merely an ornamental or informational feature of the
goods and does not function as a trademark to indicate the source of
Applicant’s goods and to identify and distinguish them from others.
Decision: The refusal to register pursuant to Sections 1, 2, and 45 on the
ground of mere ornamentation and failure to function as a mark is affirmed.