Douglas Elliman Realty, LLC

Trademark Trial and Appeal Board

Sep 4, 2020

88640177 (T.T.A.B. Sep. 4, 2020)

This Opinion is not a
Precedent of the TTAB

Mailed: September 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Douglas Elliman Realty, LLC
_____

Serial No. 88640177
_____

Stewart J. Bellus of Collard & Roe PC,
for Douglas Elliman Realty, LLC.
Kevin G. Crennan, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Zervas, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Applicant Douglas Elliman Realty, LLC seeks registration of THE NEXT MOVE
IS YOURS (in standard characters) for “real estate agency services, real estate
brokerage, real estate management, leasing of real estate” in International Class
36.”1 The Examining Attorney refused registration under Sections 1, 2, 3 and 45 of

1 Application Serial No. 88640177, filed October 3, 2019 based upon applicant’s assertion of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
Serial No. 88640177
- 2 -
the Trademark Act, 15 U.S.C. §§ 1051-53 and 1127, on the ground that THE NEXT
MOVE IS YOURS fails to function as a mark, because it does not indicate the source
of Applicant’s services, or identify and distinguish them from those of others. More
specifically, the Examining Attorney contends that THE NEXT MOVE IS YOURS is
a commonplace message or expression widely used by a variety of sources that merely
conveys an ordinary, familiar, well-recognized concept or sentiment. After the refusal
became final, Applicant appealed and Applicant and the Examining Attorney filed
briefs.2
I. Failure to Function as a Mark
“The Trade-Mark Act is not an act to register words but to register trademarks.
Before there can be registrability, there must be a trademark (or a service mark) and,
unless words have been so used, they cannot qualify for registration.” In re Standard
Oil Co., 275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960). Section 45 of the Trademark
Act defines a “service mark” as “any word, name, symbol, or device, or any
combination thereof--(1) used by a person, or (2) which a person has a bona fide
intention to use in commerce and applies to register on the principal register
established by this [Act], to identify and distinguish the services of one person,

Page references to the application record refer to the online database page numbers of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
on appeal refer to the Board’s TTABVUE docket system.
2 The Examining Attorney has objected to Applicant’s general reference in its brief to “NEXT
MOVE” registrations registered with the Office that were never made of record during
prosecution. Factual assertions must be supported by evidence in the record, and it is well-
established that the Board does not take judicial notice of records residing in the Patent and
Trademark Office, so we do not take judicial notice here. See, e.g., In re Duofold Inc., 184
USPQ 638 (TTAB 1978).
Serial No. 88640177
- 3 -
including a unique service, from the services of others and to indicate the source of
the services, even if that source is unknown.”
Although advertising phrases and slogans are not per se unregistrable, a phrase
or slogan that does not function as a trademark to indicate the source of goods or
services to identify and distinguish them from others cannot be registered on either
the Principal or the Supplemental register. Trademark Act Sections 1, 2, 3 and 45.
For example, “[s]logans and other items that are considered to be merely
informational in nature, or to be common laudatory phrases or statements that would
ordinarily be used in business or in the particular trade or industry, are not
registrable.” In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010) (affirming
refusal to register “Once a Marine, Always a Marine” for clothing because it would be
perceived as an informational slogan “to express support, admiration or affiliation
with the Marines”).
We must assess whether Applicant’s proposed mark, THE NEXT MOVE IS
YOURS, functions as a mark based on whether the relevant public, i.e. purchasers or
potential purchasers of Applicant’s services, would perceive THE NEXT MOVE IS
YOURS as identifying Applicant’s services and their source or origin. See e.g. In re
TracFone Wireless, Inc., 2019 USPQ2d 222983, at *1-2 (TTAB 2019) (“The key
question is whether the asserted mark would be perceived as a source indicator for
Applicant’s [goods or] services.”); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862
(TTAB 2006) (“[T]he critical inquiry is whether the asserted mark would be perceived
as a source indicator.”); In re Volvo Cars of North Am. Inc., 46 USPQ2d 1455, 1459
Serial No. 88640177
- 4 -
(TTAB 1998) (“A critical element in determining whether a term or phrase is a
trademark is the impression the term or phrase makes on the relevant public.”); In
re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992). In this case,
because there are no limitations to the channels of trade or classes of purchasers of
the services identified in the application, the relevant consuming public comprises all
potential purchasers of real estate agency, brokerage, management and leasing
services. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
Applicant has filed the application as intent to use, but we consider the evidence
of record showing how the designation is actually used by others in the marketplace.3
See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (failure
to function found where “the marketplace is awash in products that display the
term”); In re Eagle Crest Inc., 96 USPQ2d at 1229 (considering specimens and
evidence in the record showing how the designation is actually used in the
marketplace). “The more commonly a phrased 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.” Eagle Crest, 96 USPQ2d at 1229.

3 While a failure to function refusal is generally issued after an allegation of use, under some
circumstances, a refusal may be issued without considering the specimens. Cf. In re Right-
On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an
ornamentation refusal in a §66(a) application).
Applicant complains in its brief that the Examining Attorney went beyond the USPTO
database to search for third-party uses because it was unable to find any registered marks
on the register to issue a Section 2(d) refusal and submits that this “double search” is
improper. Applicant’s brief 4 TTABVUE 8. However, as indicated by the above cases, it is
appropriate for the Examining Attorney to submit marketplace evidence of use of the
designation to show consumer perception in the context of a failure to function as a mark
refusal.
Serial No. 88640177
- 5 -
A. Evidence
The Examining Attorney’s evidence includes dictionary definitions for “move”:
1. f. To go from one residence or location to another; relocate
5. b. To initiate an action; act
American Heritage Dictionary, ahdictionary.com February 19, 2020 Office Action
at TSDR 40.
The Examining Attorney also provided evidence of third-party uses of THE NEXT
MOVE IS YOURS. January 13, 2020 Office Action at TSDR 2-11; February 19, 2020
Office Action at TSDR 2-14. Examples of this third-party use in connection with real
estate services are shown below, with emphasis added. January 13, 2020 Office
Action at TSDR 3, 2, 6, 8, 9, 11; February 19, 2020 Office Action at TSDR 3, 5, 7, 9,
10, 12, 14, 16, 18, 19, 21, 22, 23, 24, 25.

Serial No. 88640177
- 6 -

Serial No. 88640177
- 7 -

Serial No. 88640177
- 8 -

The Examining Attorney also included use by third parties in related or other
industries (emphasis added):
“The next move is yours! From packing to loading and transporting of regular
special items, when it comes to moving, we will deal with it all. Simply call us any
time so that we can properly plan your relocation and deal with it in a timely fashion.”
Verrazano Moving and Storage (moving services), verrazanomoving.com, February
19, 2020 Office Action at TSDR 32-33.

“Moving to another country is a big decision, but choosing how to finance your new
Audi vehicle shouldn’t be. Whether you decide to lease or purchase, Audi Financial
services can guide you along the way. The next move is yours.” Audi Financial
Services (vehicle financing services), mydigimag.rrd.com, February 19, 2020 Office
Action at TSDR 25.

“The next move is yours. Ready to take your digital marketing to the next level?
… Check out the marketer’s toolkit here to learn more and get started today.” AWeber
Digital Marketing, (digital marketing), blog.aweber.com, February 19, 2020 Office
Action at TSDR 28-29.

“Let’s discuss your marketing automation needs. … It all begins with a discussion
between you and us. The next move is yours.” Walker Sands, (marketing
automation consulting), walkersands.com, February 19, 2020 Office Action at TSDR
30-31.

“The next move is yours. Like most serious investors you probably have some
specific questions about how we are able to put an entire team of institutional-class
investment experts to work managing your investments. We’d love to sit down with
you and answer those questions, one at a time. All you have to do is contact us and
schedule an appointment.” Union Advantage Financial, (financial planning and
investment advice services), unionadvantagefinancial.com, February 19, 2020 Office
Action at TSDR 26-27.

“The next move is yours. When a commercial dispute arises it’s best to seek the
services of a skilled litigator as soon as possible.” Law Office of Corbet H. Williams.
(legal services), chwilliamslaw.com, February 19, 2020 Office Action at TSDR 36-37.

“The next move is yours. Don’t put it off today. Contact us to get started.” Frugal
Web Designs, (web design services), frugalwebdesigns.com, February 19, 2020 Office
Action at TSDR 38-39.

Serial No. 88640177
- 9 -
Applicant submitted evidence of third-party registrations of other slogans and
taglines (e.g., WHERE’S THE BEEF, JUST DO IT, FINGER LICKIN’ GOOD, EAT
FRESH), as examples of the registrability of slogans and taglines.4 January 28, 2020
Response to Office Action at TSDR 2-24. Whether a slogan or tagline is used as
trademark is a fact-based inquiry that differs in every case. In any event, the question
of registrability of other taglines or slogans identified by Applicant is not before us,
and has no bearing on the question of whether the designation THE NEXT MOVE IS
YOURS is registrable.5
B. Arguments and Analysis
The Examining Attorney argues that the designation THE NEXT MOVE IS
YOURS is a commonplace message or widely used expression in many different
industries that “conveys an ordinary, familiar, well-recognized concept or sentiment.”
Examining Attorney’s brief, 6 TTABVUE 4, 5. The Examining Attorney submits that
“consumers are likely to perceive the mark as a double entendre informing them that
it is their turn to physically move, e.g., move homes, and to proverbially move, e.g.,

4 The TMEP acknowledges that slogans can be registrable if they are “used in a trademark
sense and function[] as a trademark or service mark,” but that “if a mark consists entirely of
a slogan that is generic, merely descriptive, merely informational, or that is otherwise not
being used as a mark, registration must be refused.” TMEP § 1213.05(b)(i) (Oct. 2018).
5 Applicant also stated in this response that it intended to use THE NEXT MOVE IS YOURS
with its house mark DOUGLAS ELLIMAN and provided an example of intended use.
However, since we must consider the mark for which Applicant has applied, and further note
that no allegation of use has been filed, we do not consider it. “It need hardly be said that ‘in
determining the applicant’s right to registration, only the mark as set forth in the application
may be considered; whether or not the mark is used with an associated house mark is not
controlling.’” Blue Cross and Blue Shield Association v. Harvard Community Health Plan
Inc., 17 USPQ2d 1075, 1077 (TTAB 1990).
Serial No. 88640177
- 10 -
contact the Applicant to procure their services.” Id. at 5. The Examining Attorney
argues that because of widespread use of THE NEXT MOVE IS YOURS by third-
parties, consumers will perceive it to be an informational slogan and not a source
indicator. Id. at 7.
Although Applicant acknowledges that the likely interpretation of consumers
must be considered, it submits that “common use alone is not the determinative
factor.” Applicant’s brief, 4 TTABVUE 7. Applicant contends that THE NEXT MOVE
IS YOURS has similar characteristics to registered taglines or slogan marks (such as
EAT FRESH) in that it is used by others often, it conveys information, it suggests an
action, and it functions as a trademark. Id. at 4-5. Applicant argues that while a
slogan or tagline may be informational, it can also function as a trademark and that
the cases cited by the Examining Attorney are inapplicable because “the designation
[in those cases] conveyed information and nothing else” while THE NEXT MOVE IS
YOURS requires several mental steps to discern the meaning of the phrase and does
not immediately and merely provide an informational message or idea.6 Id. at 5-6.
In this case, the numerous uses by third parties of THE NEXT MOVE IS YOURS
are strong support for the Examining Attorney’s position. Here, the third-party
Internet evidence in the record demonstrates general use of THE NEXT MOVE IS
YOURS in advertising to consumers and to businesses in a variety of industries. This
evidence shows that THE NEXT MOVE IS YOURS would be perceived not as a source

6 Applicant states that the refusal is unclear as to what factual information the Examiner
believes THE NEXT MOVE IS YOURS immediately conveys to consumers. Applicant’s brief,
4 TTABVUE 7.
Serial No. 88640177
- 11 -
identifier, but instead as a widely-used phrase, specifically, a call to action or directive
that the consumer or business contact the entity that is advertising the particular
service. See e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB
2016) (sustaining opposition to registration of for clothing because it would
be perceived as “an expression of enthusiasm, affection or affiliation with respect to
the city of Washington, D.C.”); In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013)
(commonly used political slogan NO MORE RINOS fails to function as a mark); Volvo
Cars, 46 USPQ2d 1460-61 (DRIVE SAFELY fails to function as a mark because it
would be perceived as an everyday, commonplace safety admonition); In re European-
American Bank & Trust Co., 201 USPQ 788, 790 (TTAB 1979) (THINK ABOUT IT is
a familiar expression and fails to function as a mark).
In the context of real estate services, THE NEXT MOVE IS YOURS, in addition
to being a call to action or directive, also conveys information to consumers by
suggesting that if they take action by contacting the realtor, they can move to a new
property. However, we find that THE NEXT MOVE IS YOURS does not create a
significant double entendre, as both meanings are informational. See In re Volvo Cars
of North America Inc., 46 USPQ2d 1455, 1460 (TTAB 1998) (“We hasten to add that
to the extent that applicant’s designation DRIVE SAFELY engenders some minor
double entendre, this should not result in registration inasmuch as the primary
significance of the phrase remains that of a commonplace safety admonition.”).
Although Applicant argues otherwise, the evidence reflects that this phrase is in
common use in connection with real estate services, and therefore, consumers would
Serial No. 88640177
- 12 -
not perceive of THE NEXT MOVE IS YOURS as a source indicator. Thus, the primary
significance of THE NEXT MOVE IS YOURS remains a commonly used call to action
by advertisers to consumers and businesses as well as an informational slogan used
by realtors and moving companies.
Lastly, although Applicant argues that THE NEXT MOVE IS YOURS is
registrable as a service mark, it has not submitted any evidence to rebut the
Examining Attorney’s evidence and establish that consumers would perceive THE
NEXT MOVE IS YOURS as a service mark. See In re Tilcon Warren, Inc., 221 USPQ
86 (TTAB 1984) (noting that applicant did not submit any evidence to show that
WATCH THAT CHILD functioned as a trademark to rebut the Examining Attorney’s
contention). We find the third-party use evidence is sufficient to demonstrate that
THE NEXT MOVE IS YOURS fails to function as a mark in connection with
Applicant’s services.
II. Conclusion
The record evidence shows that consumers are accustomed to seeing the phrase
THE NEXT MOVE IS YOURS used in an informational manner as a call to action or
directive to contact the particular business. As a result, consumers will not perceive
this wording as applied to Applicant’s services as a source indicator pointing uniquely
to Applicant. Rather, consumers purchasing Applicant’s services will perceive the
designation THE NEXT MOVE IS YOURS as a commonly used informational slogan
by multiple entities rather than a sole source of services.

Serial No. 88640177
- 13 -
Decision: The refusal to register THE NEXT MOVE IS YOURS under Sections
1, 2, 3 and 45 of the Trademark Act is affirmed.