EX (T.T.A.B. Feb. 8, 2019)

Trivia Today, LLC

Trademark Trial and Appeal BoardFeb 8, 2019

EX (T.T.A.B. Feb. 8, 2019)

This Opinion is not a Precedent of the TTAB Mailed: February 8, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Trivia Today, LLC _____ Serial Nos. 86746147 and 86760554 _____ Daniel S. Polley of Daniel S. Polley PA, for Trivia Today, LLC Lauren E. Burke, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Shaw, Heasley, and Pologeorgis, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Trivia Today, LLC (“Applicant”) seeks registration on the Principal Register of the marks TRIVIA QUESTION OF THE DAY and BONUS TRIVIA QUESTION OF THE DAY (both in standard characters) for the following services in International Class 41: Providing a website featuring trivia questions in the fields of entertainment, history, literature, music, arts, culture, sports and celebrities; providing a website featuring trivia questions, and trivia information in the nature of general facts, historical facts tied to the day, notable or famous people’s birthdays on that day and factual information concerning the correct answer to trivia questions, all in Serial Nos. 86746147 and 86760554 - 2 - the fields of entertainment, history, literature, music, arts, culture, sports and celebrities, all accessed by a link delivered by email; providing a website featuring trivia questions, and trivia information in the nature of general facts, historical facts tied to the day, notable or famous people’s birthdays on that day and factual information concerning the correct answer to trivia questions, all in the fields of entertainment, history, literature, music, arts, culture, sports and celebrities, all accessed by a link delivered daily by email; entertainment services, namely, providing a website featuring a daily trivia question in the fields of entertainment, history, literature, music, arts, culture, sports and celebrities, and trivia information in the fields of entertainment, history, literature, music, arts, culture, sports and celebrities, in the nature of general facts, historical facts, notable or famous people’s birthdays on that day and factual information concerning the correct answer to trivia questions; entertainment services, namely, providing a website featuring a daily trivia question in the fields of entertainment, history, literature, music, arts, culture, sports and celebrities, and trivia information in the fields of entertainment, history, literature, music, arts, culture, sports and celebrities, in the nature of general facts, historical facts, notable or famous people’s birthdays on that day and factual information concerning the correct answer to trivia questions, accessed by a link delivered by email; entertainment services accessed by a link delivered through email, namely, providing an online computer game featuring trivia questions, general facts, historical facts tied to the day, notable or famous people’s birthdays on that day and factual information concerning the correct answer to trivia questions; entertainment services accessed by a link delivered daily through email, namely, providing an on-line computer game featuring trivia questions, general facts, historical facts tied to the day, notable or famous people’s birthdays on that day and factual information concerning the correct answer to trivia questions; entertainment services, namely, providing an on-line computer game featuring a daily trivia question, a general fact, a historical fact tied to the day, notable or famous people’s birthdays on that day and factual information concerning the correct answer to the trivia question; providing an online computer game featuring trivia questions.1 1 Application Serial No. 86746147, for TRIVIA QUESTION OF THE DAY, was filed on Sept. 2, 2015, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 21, 2010. Application Serial No. 86760554, for BONUS TRIVIA QUESTION OF THE DAY, was filed on Sept. 17, 2015, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 21, 2010. Serial Nos. 86746147 and 86760554 - 3 - The Trademark Examining Attorney has refused registration of Applicant’s proposed marks under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053, 1127, on the ground that they fail to function as service marks. When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the requests for reconsideration, the appeals were resumed. We affirm the refusals to register. I. Appeals Consolidated The ex parte appeals before the Board in these co-pending applications involve common issues of law and fact, and are presented on nearly identical records and briefs. The Board, upon its own initiative, may order the consolidation of the appeals for final decision. See e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (Board sua sponte consolidated two appeals); In re Country Music Ass’n, Inc., 100 USPQ2d 1824, 1827 (TTAB 2011); In re Bacardi & Co. Ltd., 48 USPQ2d 1031, 1033 (TTAB 1997) (Board sua sponte considered appeals in five applications together and rendered single opinion). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1214 (2018). Based upon the foregoing, we hereby consolidate these appeals for purposes of final decision. Unless otherwise stated, references are to the record and briefs in Application Serial No. 86760554.2 2 Page references to the application record are to the .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. Serial Nos. 86746147 and 86760554 - 4 - II. Evidentiary Issue Before proceeding to the merits of the refusals, we address an evidentiary matter. In its requests for reconsideration, Applicant submitted a list of registered and applied-for marks containing the phrase “OF THE DAY,” obtained from the USPTO Trademark Electronic Search System (“TESS”) database.3 The Examining Attorney points out that the mere submission of such a list of marks does not make them part of the record.4 We agree. The TESS listing submitted by Applicant did not make the underlying registrations and applications listed of record. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012). To make third party registrations part of the record, Applicant should have submitted copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP § 1208.02; TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 710.03 (Oct. 2018). Applicant did not comply with this evidentiary prerequisite. The Examining Attorney’s objection is therefore sustained, and the list will be given no consideration. We turn now to the merits of these consolidated appeals. III. Applicable Law “The Trademark Act is not an act to register mere words, but rather to register 3 Request for reconsideration, 4 TTABVUE 4-7. 4 Examining Attorney’s brief, 17 TTABVUE 8. Serial Nos. 86746147 and 86760554 - 5 - 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) quoted in In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017). To function as a service mark, a proposed mark must, by definition, “identify and distinguish the services of one person ... from the services of others and … indicate the source of the services, even if that source is unknown.” 15 U.S.C. § 1127. The Examining Attorney maintains that Applicant’s applied-for marks, TRIVIA QUESTION OF THE DAY and BONUS TRIVIA QUESTION OF THE DAY, fail to perform this function. The wording conveys information that a trivia question is being presented, “but does not convey any information about the entity providing the question,” the Examining Attorney states.5 The wording is, in fact, commonly used, she notes, as illustrated by the following representative samples: • Science.gov “Trivia Question of the Day”6 • 859Sports.com “#TRIVIA QUESTION OF THE DAY”7 • WFMJ.com “Trivia Question of the Day” “Each weekday we have a trivia question….”8 • DeskWX.Weatherbug.com “Trivia question of the day” “You can also answer 5 Examining Attorney’s brief, 17 TTABVUE 7. 6 Science.gov, July 19, 21, 2016, July 25, 2016 Office Action TSDR 4. 7 859Sports.com, Feb. 9, 15, 2015, July 25, 2016 Office Action TSDR 5. 8 WFMJ.com, July 22, 2016, July 25, 2016 Office Action TSDR 6. Serial Nos. 86746147 and 86760554 - 6 - our Trivia question of the day….”9 • Embassy.org “Trivia Question of the Day”10 The word “BONUS” merely denotes “something in addition to what is expected or strictly due,” according to the Merriam-Webster Dictionary.11 And the word is commonly used in connection with asking extra trivia questions, the Examining Attorney notes. E.g.: • Minnesota State Fair “BONUS Trivia Question”12 • Aiaa.org “Bonus Trivia Question”13 Applicant counters that its specimens of use, emails sent by Applicant, show the applied-for-mark prominently by itself: 14 9 DeskWX.Weatherbug.com, July 25, 2016 Office Action TSDR 7. 10 Embassy.org, July 25, 2016 Office Action TSDR 8. 11 Merriam-Webster.com, July 25, 2016 Office Action TSDR 9. 12 MnStateFair.org, July 25, 2016 Office Action TSDR 12-13. 13 Aiaa.org 11/2013, July 25, 2016 Office Action TSDR 11. 14 Specimen, Application Serial No. 86746147, Sept. 2, 2015. Serial Nos. 86746147 and 86760554 - 7 - 15 Applicant argues that: This evidence is different from the evidence attached by the Examining Attorney to the final office action. Here, consumers register to receive a daily trivia question from Applicant and an extra daily trivia question, and obviously know that the trivia email services are from the same single source.16 Applicant also argues that its aforementioned TESS listings of numerous registrations for marks containing “OF THE DAY” show that marks containing that term are able to function as source identifiers.17 These listings, however, have been ruled inadmissible. On consideration of these arguments, we find that the applied-for marks fail to function as service marks. The critical inquiry in determining whether a designation functions as a mark is how it would be perceived by the relevant public. D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016). “Thus, a threshold issue in some cases (like this one) is whether the phrase in question in fact functions 15 Specimen, Application Serial No. 86760554, Sept. 17, 2015. 16 Applicant’s brief, 15 TTABVUE 3. 17 Id. Serial Nos. 86746147 and 86760554 - 8 - to identify the source of the services recited in the application and distinguish them from the services of others or, instead, would be perceived merely as communicating the ordinary meaning of the words to consumers.” In re Wal-Mart, Inc., 129 USPQ2d 1148, 1149 (TTAB 2019). To determine how consumers likely would perceive the phrases sought to be registered, we look not only to the specimens, but to other evidence of record showing the phrases as used in general parlance. Id. at 1150. Applicant argues that its specimen emails bearing its applied-for marks clearly emanate from a single source: Applicant.18 But the issue is not whether the emails emanate from a single source; the issue is whether the applied-for marks indicate a single source. “In every case, the question is not whether the mark has been associated with the goods [or services] by a particular mode or manner, but whether the matter sought to be registered performs the function of a trademark by signifying to purchasers the source of the goods [or services] sold or offered for sale.” In re Paramount Pictures Corp., 213 USPQ 1111, 1115 (TTAB 1982). To be a mark, it must be readily perceived by purchasers as identifying and distinguishing a single source or origin of the services. See In re Roberts, 87 USPQ2d 1474, 1478 (TTAB 2008); TMEP § 1301.02(a). The applied-for marks do not perform this function. They are informational, denoting a trivia question, or an extra trivia question, that is posed each day. “[T]erms and expressions that merely convey an informational message are not registrable.” In re DePorter, 128 USPQ2d 1298, 1299 (TTAB 2019) (citing In re Eagle 18 Applicant’s brief, 15 TTABVUE 3. Serial Nos. 86746147 and 86760554 - 9 - Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)). This is because informational phrases or slogans used in advertising or promotions are not typically perceived as source indicators. 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 Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS found to be informational phrase that does not function as a mark for retail store services). “[I]f a mark consists entirely of a slogan that is … merely informational, or that is otherwise not being used as a mark, registration must be refused.” TMEP § 1213.05(b)(i). The applied-for marks are, moreover, commonly used phrases, as the third-party evidence cited by the Examining Attorney demonstrates. “Common use of a phrase by third parties merely for the purpose of imparting information makes it less likely that the public will perceive it as identifying a single commercial source and less likely that it will be recognized by purchasers as a trademark.” In re Wal-Mart, Inc., 129 USPQ2d at 1153. “The more commonly a phrase 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.” In re Eagle Crest, 96 USPQ2d at 1229 quoted in In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013). See also D.C. One Wholesaler, 120 USPQ2d at 1714-16; In re First Union Nat’l Bank, 223 USPQ 278, 280 (TTAB 1984) (virtually impossible for commonly used phrases such as “Sale Serial Nos. 86746147 and 86760554 - 10 - Today” or “We Sell at Low Prices” to be perceived as identifying and distinguishing services). In sum, because the applied-for marks are merely informational, they fail to indicate the source of the services, and because they are commonly used by multiple sources, they do not identify and distinguish Applicant’s services from those of others. See generally TMEP § 1202.04. They must accordingly remain in the public domain, available to all competitors. In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460 (TTAB 1998). As McCarthy puts it, “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 (5th ed. Nov. 2018 update). IV. Conclusion Accordingly, we find that TRIVIA QUESTION OF THE DAY and BONUS TRIVIA QUESTION OF THE DAY fail to identify or distinguish Applicant’s services from the services of others, or to indicate the source of those services. They fail to function as service marks, and are ineligible for registration under Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§ 1051, 1052, 1053, and 1127. Decision: The refusals to register Applicant’s applied-for marks TRIVIA QUESTION OF THE DAY and BONUS TRIVIA QUESTION OF THE DAY are affirmed.