Thomas J. Hulting dba No More RINOs! Enterprises

                     This Opinion is a Precedent                       Mailed:
                                                                 June 10, 2013
                            of the TTAB


               United States Patent and Trademark Office
                     Trademark Trial and Appeal Board
                                ________
      In re Thomas J. Hulting d/b/a No More RINOs! Enterprises
                                   ________
                             Serial No. 77666826
                                    _______
Evan T. Hulting, attorney at law, for Thomas J. Hulting d/b/a No More
   RINOs! Enterprises.
Tricia Sonneborn, Trademark Examining Attorney, Law Office 110 (Chris
    A.F. Pedersen, Managing Attorney).
                                    _______
Before Bucher, Lykos and Hightower, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:


    On February 9, 2009, Thomas J. Hulting d/b/a No More RINOs! Enter-

prises (“applicant”) filed an intent-to-use application to register the mark No

More RINOs! in standard character format for “adhesive-backed letters and

numbers for use in making posters; advertising signs of paper or cardboard;

bumper stickers; printed paper signs; printed paper signs, namely, table

tents; stickers; stickers and decalcomanias” in International Class 16; “shirts;

short-sleeved or long-sleeved t-shirts; short-sleeved shirts; t-shirts; wearable

garments and clothing, namely, shirts” in International Class 25; and “cam-
Serial No. 77666826


     paign buttons; novelty buttons” in International Class 26.1 Following issuance

     of a notice of allowance, on November 8, 2010, applicant submitted the follow-

     ing specimens with his statement of use for each respective class:




            The trademark examining attorney refused registration of the mark un-

     der Sections 1, 2 and 45 of the Trademark Act, 

15 U.S.C. §§ 1051

, 1052, and

     1127, on the ground that the designation is merely ornamental and informa-

     tional matter and does not function as a mark for the goods in each interna-

     tional class. Applicant responded by submitting the following substitute spec-

     imens of use:



     1
         Application Serial No. 77666826.


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Serial No. 77666826




          Upon final refusal of registration, applicant filed a request for reconsid-

     eration and timely appeal. Both applicant and the examining attorney filed

     briefs. For the reasons discussed herein, the Board affirms the refusal to reg-

     ister.

          Section 45 of the Trademark Act defines a “trademark” in relevant part

     as “any word, name, symbol, or device, or any combination thereof used by a

     person … to identify and distinguish his or her goods … from those manufac-

     tured or sold by others and to indicate the source of the goods, even if that

     source is unknown.” 

15 U.S.C. § 1127

. “[N]ot 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


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Serial No. 77666826


     that it performs a trademark function and even labeled as a trademark neces-

     sarily 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);

     see also In re Bose Corp., 

546 F.2d 893

, 

192 USPQ 213

, 215 (CCPA 1976) (“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.”). It is well settled that

     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

     Boston Beer Co. L.P., 

198 F.3d 1370

, 

53 USPQ2d 1056

 (Fed. Cir. 1999). Nei-

     ther are slogans and other terms that are considered to be merely informa-

     tional in nature. See, e.g., In re Eagle Crest Inc., 

96 USPQ2d 1227

, 1232

     (TTAB 2010) (ONCE A MARINE, ALWAYS A MARINE would not be per-

     ceived as a trademark but rather as an informational slogan “to express sup-

     port, admiration or affiliation with the Marines”); In re Volvo Cars of N. Am.,

     Inc., 

46 USPQ2d 1455

, 1460-61 (TTAB 1998) (DRIVE SAFELY not registrable

     because it would be perceived only as an everyday, commonplace safety ad-

     monition and not as a trademark for “automobiles and structural parts




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Serial No. 77666826


     therefor”); In re Manco, Inc., 

24 USPQ2d 1938

, 1942

     (TTAB 1992) (THINK GREEN and design not regis-

     trable because it would be perceived only as an in-

     formational      slogan    encouraging       environmental

     awareness and not as a trademark for weather

     stripping and paper products). “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

     Inc., 96 USPQ2d at 1229 (citation omitted).2

          “The critical inquiry in determining whether a designation functions as a

     mark is how the designation would be perceived by the relevant public.” In re

     Eagle Crest Inc., 96 USPQ2d at 1229. “To make this determination we look to

     the specimens and other evidence of record showing how the designation is

     actually used in the marketplace.” Id. (citation omitted); see also Bose, 

546 F.2d 893

, 192 USPQ at 216 (“[T]he manner in which an applicant has em-

     ployed the asserted mark, as evidenced by the specimens of record, must be

     carefully considered in determining whether the asserted mark has been used

     as a trademark with respect to the goods named in the application.”).




     2
       See also Cosmetically Sealed Indus. Inc. v. Chesebrough-Pond's USA Co., 

125 F.3d 28

, 

43 USPQ2d 1956, 1958

 (2d Cir. 1997) (“[T]he challenged phrase ‘Seal it with a
     Kiss’ (with or without the two exclamation points) is a clear instance of a non-
     trademark use of words . . . . The [plaintiff’s] phrase ‘sealed with a kiss’ is a fixture of
     the language….”).


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Serial No. 77666826


          Consistent with the guidance set forth above, we shall first examine how

     applicant’s proposed mark is used on the specimens. When evaluating a mark

     that appears to be ornamental, rather than functioning as an indicator of

     source, “the size, location, dominance and significance of the alleged mark as

     applied to the goods” are all relevant factors in determining whether it is in-

     herently distinctive. See In re Pro-Line Corp., 

28 USPQ2d 1141

, 1142 (TTAB

     1993); In re Dimitri’s Inc., 

9 USPQ2d 1666

, 1667 (TTAB 1988); In re Astro-

     Gods Inc., 

223 USPQ 621

, 623 (TTAB 1984). Although there is no prescribed

     method or place for affixation of a mark to goods, the location of a mark on the

     goods “is part of the environment in which the [mark] is perceived by the pub-

     lic and ... may influence how the [mark] is perceived.” In re Tilcon Warren

     Inc., 

221 USPQ 86

, 88 (TTAB 1984). See also In re Paramount Pictures Corp.,

     

213 USPQ 1111

, 1115 (TTAB 1982). We think the same concepts apply when

     determining whether a phrase functions as a trademark or is merely informa-

     tional. The Board recently elaborated on this concept in the case of In re Lu-

     lulemon Athletica Canada Inc., 

105 USPQ2d 1684

, 1689 (TTAB 2013) in

     which it stated “we reject a per se rule regarding registrability based on the

     size of a mark on clothing. Rather, in considering the commercial impression

     of marks of this nature, the size of the mark is one consideration along with

     others, and the registrability of each mark must be determined on a case-by-

     case basis.”




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Serial No. 77666826


          The examining attorney has submitted evidence that “No More RINOs!”

     is a commonly used political slogan meaning “No More Republicans In Name

     Only.” See excerpts from www.zazzle.com and www.freerepublic.com (Office

     Action denying Request for Reconsideration, March 13, 2012). As further ex-

     plained, the phrase is a well-recognized political call to action by a conserva-

     tive wing of the Republican Party:

          Tea Party to Davis: No More Rinos. … Voters don’t want a return
          to the “Republicans-In-Name-Only” of the President George W.
          Bush era, when the Republican Congress signed off on increased
          spending on wars and the 2008 bank bailout.

     Excerpt from http://news.cincinnati.com/article/ (Office Action denying Re-

     quest for Reconsideration, March 13, 2012). The slogan “No More RINOs!” is

     commonly used by others in the marketplace as ornamental matter on t-

     shirts and various other retail items in support of this movement within the

     Republican Party. See for example the following:




     Excerpt from www.cafepress.com (Request for Reconsideration Denied, March

     13, 2012);



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Serial No. 77666826




     Excerpt from www.zazzle.com (Office Action denying Request for Reconsidera-

     tion, March 13, 2012).

          The record evidence shows that consumers are accustomed to seeing the

     phrase “No More RINOs! displayed on bumper stickers, t-shirts, novelty pins

     and other items from many different sources. As a result, consumers will not

     perceive this wording as applied to applicant’s goods as a source indicator

     pointing uniquely to applicant. Rather, consumers purchasing applicant’s

     goods will perceive applicant’s proposed mark as a political slogan commonly

     used by multiple individuals and entities rather than a sole source of products

     or services. Indeed, as the record reflects, consumers would not view the pro-

     posed mark as an indicator of the source of applicant’s goods due to the nature

     of the political message conveyed. By way of illustration, the website

     www.zazzle.com in promoting its products bearing the phrase “No More

     RINOs!” exhorts prospective consumers to,



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Serial No. 77666826


          Take a stand for Conservatism. Don’t let Progressive RINOs con-
          tinue to hijack our Party and shut out the Conservative Majority
          in America. NO MORE RINOS! Stand up for Conservative Values
          and the American People.

     Excerpt from www.zazzle.com (Request for Reconsideration Denied, March

     13, 2012). In fact, the website evidence placed into the record by the examin-

     ing attorney demonstrates that many different sites carry T-shirts having

     almost identical messages and often very similar imagery.

           The specimens of use for Classes 16 and 26 consist of photographs of a

     bumper sticker, sign and novelty pin, each displaying applicant’s proposed

     mark in large, prominent lettering in the center of each item. Clearly, the

     placement, size, and dominance of the wording are consistent with informa-

     tional (or ornamental), not trademark use. Such prominence is more con-

     sistent with the conveying of an informational message than with signifying

     a brand or an indicator of source. Cf. Lululemon, 105 USPQ2d at 1689 (“in

     considering the commercial impression of marks of this nature, the size of the

     mark is one consideration along with others … the overriding commercial

     impression of this large-size applied-for design is that of ornamentation.”).

     Even though the phrase “No More RINOs!” as displayed on the front of the T-

     shirt is proportionally smaller than it is in the specimens for the other classes

     of goods, given the significance of the phrase, it does not have the commercial

     impression of a source indicator. In re Paramount Pictures Corp., 213 USPQ

     at 1115 (location of a proposed mark is not itself determinative).




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Serial No. 77666826


          Applicant contends that the refusal should be obviated due to a change in

     ownership from “Thomas J. Hulting DBA Statesman Enterprises” to “Thomas

     J. Hulting DBA NO MORE RINOS! ENTERPRISES.” Applicant’s Brief p. 3.

     Of course, as correctly explained by the examining attorney in her brief, “a

     change in the DBA or any ownership change has no bearing whatsoever on

     trademark entitlement in this or any application.” Public knowledge of the

     name of the owner of an asserted mark is not the test for whether matter

     functions as a mark. In fact, the law recognizes that matter can be a mark

     even when the source is unknown, so long as the mark signifies a single

     source. Cf. In re Proctor & Gamble Co., 

105 USPQ2d 1119

 (TTAB 2012)

     (Board found design of cap of mouthwash bottle inherently distinctive and

     therefore pointing to a single source).

          Similarly, applicant’s substitute specimens bearing the tagline “By

     Statesman Enterprises” do not obviate the refusal. This is clearly not part of

     the phrase for which applicant seeks registration, and merely adding this ta-

     gline to the shirts, buttons and bumper stickers does not render the political

     slogan at issue here capable of functioning as a mark. The tagline is not part

     of the mark applied for, nor can it be added to the mark. Moreover, since a

     registration without the added tagline would leave the registrant free to use

     the proposed tagline or not, it can have no bearing on our determination of

     registrability. See, e.g,, Denney v. Elizabeth Arden Sales Corp., 

263 F.2d 347

,

     

120 USPQ 480

, 481 (CCPA 1959) (court refused to consider “house mark” used



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Serial No. 77666826


     in conjunction with the mark at issue, where the house mark was not part of

     the mark in the application). To the extent that the tagline “By Statesman

     Enterprises” conveys to purchasers that the goods come from a particular

     source, it would be the tagline that conveys this information, not the matter

     that applicant seeks to register. In addition, even if the tagline would reveal

     the source of the particular products to which it might be affixed, it remains

     true that products bearing the slogan “No More RINOs!” come not just from

     applicant but from many sources. See, e.g., See BellSouth Corp. v.

     DataNational Corp., 

60 F.3d 1565

, 

35 USPQ2d 1554

, 1558 (Fed. Cir. 1995)

     (approving of Board’s statement that, because of the widespread use, the pub-

     lic “will not regard the [alleged mark at issue] as a trademark but merely as

     an informational symbol which denotes yellow pages”).

          We further note that applicant’s reliance on In re Jockey Int’l Inc., 

192 USPQ 579

 (TTAB 1976), is misplaced. That case involved the registrability of

     an inverted letter “Y” design mark, not a political slogan. The Board specifi-

     cally rejected the argument that the inverted “Y” design mark constituted

     mere ornamentation, pointing to evidence such as use on of the mark on cloth-

     ing labels as well as promotion thereof in advertising materials by the phrase

     “known the world over by this symbol” in association with the inverted-Y. As

     such, it is distinguishable from the case before us.




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Serial No. 77666826


          On a final note, we emphasize that applicant’s intent that the slogan

     should function as a trademark is irrelevant to our analysis. As previously ex-

     plained by the Board:

          [T]he mere fact that applicant’s slogan appears on the specimens,
          even separate and apart from any other indicia which appear on
          them, does not make it a trademark. To be a mark, the term, or
          slogan, must be used in a manner calculated to project to pur-
          chasers or potential purchasers a single source or origin for the
          goods in question. Mere intent that a term function as a trade-
          mark is not enough in and of itself, any more than attachment of
          the trademark symbol would be, to make a term a trademark.
          (emphasis added)

     In re Manco, Inc., 24 USPQ2d at 1941, quoting In re Remington Products Inc.,

     

3 USPQ2d 1714

, 1715 (TTAB 1987).3

          In sum, based on the record evidence, we 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.

          Decision: The refusal to register under Sections 1, 2 and 45 of the

     Trademark Act is affirmed.




     3  Accord Otto Roth & Co. v. Universal Foods Corp., 

640 F.2d 1317

, 

209 USPQ 40, 45

     (CCPA 1981) (“Even if appellee adopted and used BRIE NOUVEAU with the intent
     ‘to identify its goods and distinguish them from those manufactured or sold by others’
     -- i.e., adopted and intended to use BRIE NOUVEAU as a trademark -- BRIE
     NOUVEAU must be distinctive” for its user to be able to rely on it in an opposition.);
     Plastilite Corp. v. Kassnar Imports, 

508 F.2d 824

, 

184 USPQ 348, 350

 (CCPA 1975)
     (“it is the association of the mark with a particular source by the ultimate consumers
     which is to be measured—not appellant’s intent”); Roux Labs., Inc. v. Clairol Inc.,
     427 F2d 823, 

66 USPQ 34

, 39 (CCPA 1970) (“The mere fact that a combination of
     words or a slogan is adopted and used by a manufacturer with the intent Clairol has
     manifested here-that it identify its goods and distinguish them from those of others-
     does not necessarily mean that the slogan accomplishes that purpose in reality.”).


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