On December 1, 2020, the TTAB continued its recent trend of decisions refusing to register marks on the ground of failure-to-function. In another precedential decision, the TTAB refused Applicant Lee Greenwood’s (“Greenwood”) application to register the phrase GOD BLESS THE USA for use in connection with “accent pillows; decorative centerpieces of wood” and “decorative wall hangings, not of textile,” finding that the applied-for phrase failed to function as a trademark. In a double-blow, the TTAB refused to enter Greenwood’s proposed amendment of the mark to THE LEE GREENWOOD GOD BLESS THE USA, ruling that such an amendment constitutes a material alteration of the proposed mark.
On the issue of failure-to-function, the examining attorney argued that Greenwood’s original proposed mark fails to function as a trademark because GOD BLESS THE USA is “a common patriotic message, analogous to and synonymous with ‘God Bless America.’” [Decision, at p. 6]. In support of this position, the examining attorney presented evidence from more than 36 third-party websites showing that the phrase GOD BLESS THE USA is commonly used on a wide array of goods. [Id.].
The TTAB noted that the critical inquiry in determining whether a proposed mark functions as trademark is how the relevant public would receive the proposed mark. [Id., at p. 4]. In considering this inquiry, the TTAB found Greenwood’s case “reminiscent of” the case of D.C. One Wholesaler v. Chien. [Id., at p. 8].
D.C. One Wholesaler involved common use of the phrase “I ♥ DC” on a wide range of goods, including apparel, keychains, and commuter cups. [Id.]. In that case, the TTAB found that the “‘widespread ornamental use of the phrase by third parties “is part of the environment in which the [proposed mark] is perceived by the public and … may influence how the [proposed mark] is perceived.’” [Id., at p. 9 (quoting D.C. One Wholesaler, 120 USPQ2d 1710, 1716 (TTAB 2016)].
Relying on precedent, the TTAB ruled, “the phrase GOD BLESS THE USA is displayed, not as a source indicator, but as an expression of patriotism, affection, or affiliation with the United States of America.” [Id.]. In so ruling, the TTAB expressly rejected Greenwood’s argument that the public would commonly recognize the phrase GOD BLESS THE USA as referring to his signature song—a country song that has been downloaded no less than 2.5 million times. [Id.]. Despite Greenwood’s talent and fame as a country singer, the TTAB cautioned that, because there are no limitations to the channels of trade or classes of consumer of the goods identified in the subject application, the relevant consumers are members of the general public, who may, or may not, be music aficionados. [Id., at p. 10]. Thus, the TTAB held that Greenwood’s proposed mark GOD BLESS THE USA is “devoid of source-identifying significance and therefore fails to function as a trademark.” [Id.].
Materially Altering the Proposed Mark
As an alternative argument, Greenwood proposed amending his application to include his registered mark THE LEE GREENWOOD COLLECTION. Greenwood argued that his registered mark appears close to his applied-for mark GOD BLESS THE USA on the specimens of use he provided to the USPTO. [Decision, at p. 11]. The examining attorney rejected Greenwood’s proposal, noting that Trademark Rule 2.72 allows an applicant to amend the description or drawing of the mark only if “the proposed amendment does not material alter the mark.” [Id., at p. 12].
In further support of his position, Greenwood relied on ownership of a registration for the mark THE LEE GREENWOOD COLLECTION for use with the same goods recited in the subject application, and maintained that he is allowed to amend the proposed mark to include his previously registered mark because the TMEP states, “An amendment adding an element that the applicant has previously registered for the same goods or services may be permitted.” [Id. (quoting TMEP § 807.14(b))].
The TTAB considered various precedents regarding this issue and concluded that, under current law, “the key comparison is between the proposed amendment and the drawing of the mark in the original application.” [Id., at p. 21]. More specifically, the crucial question is whether the old and new forms of the mark create “essentially the same commercial impression.” [Id.].
A person must answer this question of fact regarding commercial impression from the viewpoint of the ordinary consumer. [Id., at p. 22 (citing, inter alia, DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)]. The TTAB noted that ordinary consumers, unfamiliar with registrations on the Principal Register, could conceivably view the addition of an applicant’s previously registered matter as a significant change from the mark as originally filed. [Id., at p. 22].
The TTAB ultimately held that “previous registration of matter added in a proposed amendment is not an exception to the rule against material alteration; it is a factor to be considered in determining whether the alteration is material.” [Id.]. Reviewing the proposed alteration in this case, the TTAB agreed with the examining attorney that the addition of THE LEE GREENWOOD COLLECTION to GOD BLESS THE USA would materially alter the original mark. [Id., at p. 23]. Thus, the TTAB rejected Greenwood’s proposed amendment to the subject application.