In a recent precedential decision, the United States Trademark Trial and Appeal Board (“TTAB”) affirmed an examining attorney’s failure-to-function refusal as respecting the standard character mark TEXAS LOVE, rejecting the applicant’s argument that the refusal violated the Equal Protection Clause of the U.S. Constitution by treating Texas citizens differently than citizens of Florida, California, Nevada, Maine, and Hawaii.

Applicant Texas With Love, LLC (“TWL”) sought registration of the standard character mark TEXAS LOVE for use on or in connection with “hats; shirts.” The examining attorney refused TWL’s application finding that TEXAS LOVE fails to function as a mark because it does not indicate the source of TWL’s goods, or identify and distinguish them from others’ goods. Instead, the examining attorney concluded that the evidence showed that TEXAS LOVE conveyed “a well-recognized and widely used concept or sentiment.” [Decision, at pp. 1-2]. In support of the refusal, the examining attorney submitted substantial Internet evidence showing third party clothing using the mark TEXAS LOVE, in various forms.

TWL appealed the refusal decision to the TTAB. Among other things, TWL argued that the refusal decision violated the Equal Protection Clause of the U.S. Constitution because it treated citizens of Texas differently than citizens of other States. In support of this argument, TWL cited other registrations that the USPTO had issued for the following marks in what TWL deemed to be “contextually identical” situations: FLORIDA LOVE, CALIFORNIA LOVE, VERONA LOVE, BURMA LOVE, SOUTHERN LOVE, EAST COAST LOVE, and WAIKIKI LOVE.

The TTAB began its analysis by noting that “[n]ot every word, name, phrase, symbol or design, or combination thereof which appears on a product functions as a trademark” and “[m]ere intent that a phrase function as a trademark is not enough in and of itself to make it a trademark.” [Decision, at p. 11 (quoting In re Pro-Line Corp., 28 USPQ2d 141, 1142 (TTAB 1993)]. In this particular case, the TTAB found that third party evidence showed that the relevant consuming public would not perceive TEXAS LOVE as a source identifier, but “as a well-recognized and commonly expressed concept or sentiment”—namely, love for or from Texas. [Id., at p. 12]. Further, the TTAB noted that the examining attorney had identified numerous examples of third party uses of TEXAS LOVE (in various forms) on goods identical to or similar to the goods for which TWL sought registration of TEXAS LOVE. In view of such evidence, the TTAB concluded that TWL’s TEXAS LOVE mark does not refer to the sources of the products offered, but, rather, conveys “support for, or affiliation or affinity with the State of Texas.” [Id., at pp. 17-18].

The TTAB also concluded that TEXAS LOVE, in various forms, is widely used by TWL’s competitors in the clothing field, contributing to the determination that the mark fails to function as a source identifier.

Finally, the TTAB rejected TWL’s equal protection argument for two reasons: (1) it lacked factual support; and (2) the Federal Circuit had foreclosed the very argument TWL made.

As to the first argument, the TTAB noted that TWL provided no evidence, other than the existence of third party registrations themselves, to show that the USPTO treats Texas citizens differently than citizens of other States. More specifically, the TTAB stated that TWL failed to introduce any evidence regarding how the third parties used the other marks in connection with their goods and/or services, how extensively the third parties used their marks, whether the third party marks convey particular meanings or commercial impressions, and, if so, what those meanings or impressions are. [Id., at p. 23]. Without such information, the TTAB ruled that it could not make any determination regarding whether the refusal of TWL’s application was made in a situation “contextually identical” to the circumstances that gave rise to allowances of the other registrations. [Id., at pp. 23-24].

As to the second argument, the TTAB pointed to In re Shinnecock Smoke Shop, wherein the Federal Circuit rejected an applicant’s equal protection argument, stating:

[A]llegations of disparate treatment, even if accurate, do not diminish the Board’s and Examining Attorney’s legitimate, nondiscriminatory reasons for denying registration. Even if his allegations were accurate, the most Applicant could establish is that the USPTO should have rejected the other marks. It does not follow that the proper remedy for such mischief is to grant Applicant’s marks in contravention of section 1052(a).

[Decision, at pp. 24-25 (quoting In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009))]. In sum, the TTAB relied on the well-settled principle that “[e]ach application for trademark registration must be considered on its own merits.” [Id., at p. 25 (quoting Int’l Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1519 (Fed. Cir. 1999))].

The decision is In re Texas With Love, LLC, Serial No. 87793802 (TTAB Oct. 29, 2020) (precedential).