JC Franchising Group, LLC

Trademark Trial and Appeal Board

Aug 1, 2019

87338400 (T.T.A.B. Aug. 1, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: August 1, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re JC Franchising Group, LLC _____ Serial No. 87338400 _____ Marina F. Cunningham of McCormick, Paulding & Huber, LLP, for JC Franchising Group, LLC. Thomas Young, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Zervas, Larkin, and Dunn, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: JC Franchising Group, LLC (“Applicant”) seeks registration on the Principal Register of the proposed mark WHAT’S IN YOUR AIR? in standard characters for “inspecting buildings for the existence of mold; indoor air quality testing services,” in International Class 42.1 1 Applicant is the owner by assignment of Application Serial No. 87338400, which was filed on February 16, 2017 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on the original applicant’s claimed first use of the mark and first use of the mark in commerce since at least as early as September 20, 2015. Serial No. 87338400 - 2 - The Trademark Examining Attorney originally refused registration based on likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and made that refusal final.2 Applicant appealed and requested reconsideration. 4 TTABVUE.3 The Board instituted the appeal and remanded the application to the Examining Attorney for consideration of the reconsideration request. Following remand, the Examining Attorney withdrew the Section 2(d) refusal, but issued a new refusal under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053, 1127, on the ground that the proposed mark fails to function as a mark for the services identified in the application.4 Following Applicant’s response to the new failure-to- function refusal,5 the Examining Attorney made that refusal final,6 and the appeal was resumed on that issue alone. The appeal is fully briefed. We affirm the refusal to register. 2 November 17, 2017 Final Office Action at 1. All citations in this opinion to the application record are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office (“USPTO”). 3 Citations in this opinion to the briefs and the reconsideration request refer to TTABVUE, the Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number preceding TTABVUE corresponds to the docket entry number, and any numbers following TTABVUE refer to the page number(s) of the docket entry where the cited materials appear. 4 May 24, 2018 Office Action at TSDR 1. 5 November 26, 2018 Response to Office Action. 6 November 28, 2018 Final Office Action at TSDR 1. Serial No. 87338400 - 3 - I. Record on Appeal7 The record on appeal includes Applicant’s specimen of use, webpages of providers of air quality-related goods and services that display the phrase “What’s in your air?” or a variant, made of record by the Examining Attorney,8 and registrations of marks sharing the format “What’s in Your _____?,” made of record by Applicant.9 II. Failure to Function Refusal A. Applicable Law “‘[A] proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services.’” In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, *16 (TTAB 2019) (quoting In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019)). “‘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.’” Id. (quoting DePorter, 129 USPQ2d at 1299 (quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976)). “There are multiple reasons why a proposed mark may fail to function as one.” Id. (citing TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1202 (Oct. 2018)). Here, the Examining Attorney “invokes the line of cases holding that 7 Some of the evidence in the record was directed to the Section 2(d) refusal that was withdrawn following remand. We do not list or discuss that evidence. 8 May 24, 2018 Office Action at TSDR 2-28; November 28, 2018 Final Office Action at TSDR 2-50. 9 November 26, 2018 Response to Final Office Action at TSDR 8-229. By assignment, Applicant owns one of these registrations, Registration No. 5285214 for the mark WHAT’S IN YOUR AIR? for “providing training courses in the field of home inspection.” Id. at TSDR 16-19. Serial No. 87338400 - 4 - ‘terms and expressions that merely convey an informational message are not registrable.’” Id. (quoting DePorter, 129 USPQ2d at 1299). Under these cases, “[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”). See also D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (sustaining opposition to registration of I ♥ DC 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 Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (affirming refusal to register “Drive Safely” for automobiles because it would be perceived as an everyday, commonplace safety admonition). “The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Eagle Crest, 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. “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.” Id. Serial No. 87338400 - 5 - B. The Examining Attorney’s and Applicant’s Arguments 1. Examining Attorney The Examining Attorney argues that because Applicant’s proposed mark “is a common phrase used in the field of air purification and air quality testing, consumers will not perceive the applied-for mark as a service mark that indicates the source of the applicant’s services and identifies and distinguishes its services from others.” 9 TTABVUE 4. He cites third-party uses of the question “What’s in Your Air?,” or a variant, which he argues demonstrate “that there is widespread use of the phrase ‘WHAT’S IN YOUR AIR?’ in the field of air quality to promote air quality purification products and services and convey a particular message to consumers” that they “should consider the safety and purity of the air one breathes and the need for air quality testing.” Id. at 7. He also notes Applicant’s use of the proposed mark on Applicant’s specimen, which he argues “is nearly identical to how other businesses providing the same and similar goods and services use the phrase,” and “reinforces the conclusion that the applied-for mark would not be perceived as a service mark.” Id. at 9. We reproduce below the pertinent portions of a representative sample of the third- party webpages, and Applicant’s specimen of use, that are relied on by the Examining Attorney: Serial No. 87338400 - 6 - (a) Third-Party Webpages 10 11 10 May 24, 2018 Office Action at TSDR 5. 11 Id. at TSDR 8. Serial No. 87338400 - 7 - 12 13 14 12 Id. at TSDR 14. 13 Id. at TSDR 20. 14 Id. at TSDR 21. Serial No. 87338400 - 8 - 15 16 15 November 28, 2018 Final Office Action at TSDR 5. 16 Id. at TSDR 8. Serial No. 87338400 - 9 - 17 18 17 Id. at TSDR 10. 18 Id. at TSDR 33. Serial No. 87338400 - 10 - 19 (b) Applicant’s Specimen 20 19 Id. at TSDR 37. 20 February 16, 2017 Specimen of Use. Serial No. 87338400 - 11 - 2. Applicant Applicant argues that its proposed “mark is not merely informational as it does not merely convey general information about the goods or services, nor is it a widely used or commonplace message used in ordinary language such that consumers will not perceive the wording as an indicator of source for the Applicant’s services.” 7 TTABVUE 12. Applicant cites examples of terms that have been found not to function as marks because they convey information about specific matters, id. at 13,21 and argues that unlike these terms, WHAT’S IN YOUR AIR? “does not merely convey general information about the characteristics, features or qualities of the applied-for services, e.g., the environmentally friendly nature, certification processes, costs, or other characteristics of features of Applicant’s services.” Id. Applicant claims that the proposed mark “does not merely convey information, rather [it] is presented in the form of a question asking consumers to consider or ponder what is in their air.” Id. at 14.22 21 Applicant cites In re T.S. Designs, Inc., 95 USPQ2d 1669 (TTAB 2010) (CLOTHING FACTS for shirts); In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (AOP for wine); In re Schwauss, 217 USPQ 361 (TTAB 1983) (FRAGILE for labels and bumper stickers); In re Aerospace Optics, Inc., 78 USPQ2d 1861 (TTAB 2006) (SPECTURM for pushbutton switches); In re Melville Corp., 228 USPQ 970 (TTAB 1986) (BRAND NAMES FOR LESS for retail clothing store services); and In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale). 22 Applicant argues that failure-to-function refusals “‘may be grounded in concerns and analysis similar to those underlying descriptiveness refusals under Section 2(e)(1)’” of the Trademark Act. 7 TTABVUE 14 (quoting Trademark Examination Guide 2-17 Merely Informational Matter (July 2017)). The Board recently held that evidence of mere descriptiveness may support a finding that a proposed mark also fails to function as a mark because it describes properties of the goods or services. Yarnell Ice Cream, 2019 USPQ2d 265039, *17-18. Serial No. 87338400 - 12 - Applicant argues that “the ‘commonplace’ category is intended to encompass expressions, such as DRIVE SAFELY, which have become so commonly used in ordinary language that consumers will not perceive the wording as an indicator of source for the goods or services.” Id.23 Applicant argues that its proposed mark is unlike these phrases because it “simply does not rise to the level of a commonly used expression.” Id. at 15. Applicant criticizes the Examining Attorney’s evidence of third- party uses of “What’s in Your Air?” because most of them “do not use the wording ‘WHAT’S IN YOUR AIR?’ in connection with the services at issue, namely, ‘Inspecting buildings for the existence of mold; Indoor [air] quality testing services.” Id. Applicant acknowledges that three of the websites “arguably use the wording ‘WHAT’S IN YOUR AIR?’ in connection with some of the services at issue,” but argues that “these relatively few occurrences are not enough to support a finding that Applicant’s mark ‘WHAT’S IN YOUR AIR?’ is a common expression commonly used in connection with the services at issue.’” Id. at 19-20 (citing November 28, 2018 Final Office Action at TSDR 1); 10 TTABVUE 5-8. With respect to its own use of WHAT’S IN YOUR AIR?, Applicant argues that the proposed mark “‘is used, alone, as a slogan in the advertisement of applicant’s services,’” 7 TTABVUE 21 (quoting In re C.R. Anthony Co., 3 USPQ2d 1894, 1895 23 Applicant cites In re Manco, 24 USPQ2d 1938 (TTAB 1987) (THINK GREEN and design for paper goods and weatherstripping); In re Remington Prods., Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN USA for electric shavers and parts); America Online, Inc. v. AT&T Corp., 243 F.3d 812, 57 USPQ2d 1902 (4th Cir. 2001) (YOU HAVE MAIL for computer services); and Cosmetically Sealed Indus. Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28, 43 USPQ2d 1956 (2d Cir. 1997) (SEAL IT WITH A KISS for lip gloss). Serial No. 87338400 - 13 - (TTAB 1987)), and “appears prominently, in font that is significantly larger than any other wording or trade name appearing on the specimen, and is located in the center of the specimen.” Id. Finally, Applicant argues that “there are at least fifty (50) other trademarks / service marks having a similar format as Applicant’s mark that have been granted registration.” Id. According to Applicant, these marks, “like Applicant’s mark, all share the common format, ‘What’s in Your _____?’ and ask consumers to consider or question what is in the thing identified by the blank.” Id. Applicant argues that “[c]onsumers have been exposed to numerous marks in the format ‘WHAT’S IN YOUR _____?’ and readily recognize these types of marks as identifying the source of the respective goods / services rather than as merely conveying informational matter.” Id. at 23.24 Applicant further argues that because it “is the owner of U.S. Registration No. 5,285,214 . . . for the identical mark to that of the present application, i.e., ‘WHAT’S IN YOUR AIR?’ and which was not found to fail to function as a mark,” Applicant’s “present application should be allowed to proceed to registration.” Id. Applicant claims that “the sheer number of marks that have been granted registration makes it difficult to view the present refusal as anything but arbitrary and inconsistent.” Id. Applicant concludes that “[a]lthough an examining attorney may not be bound by decisions of other examining attorneys in prior cases, it is necessary that there is some sense of consistency in the examination of trademark 24 Applicant provides a table of 11 such marks. 7 TTABVUE 22-23. Serial No. 87338400 - 14 - applications,” and that “there is no consistency where these marks were allowed while Applicant’s mark is refused registration.” Id. C. Analysis of Refusal We will begin our analysis where Applicant’s argument ends. “While we recognize that ‘consistency is highly desirable,’ consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400, 1407 (TTAB 2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007)). We “must assess each mark on its own facts and record.” Id. Accordingly, the fact that the USPTO has registered other “WHAT’S IN YOUR _____?” formative marks for different goods and services does not entitle Applicant to a registration of WHAT’S IN YOUR AIR? for “inspecting buildings for the existence of mold; indoor air quality testing services,” the services identified in the instant application. Nor does the fact that the USPTO has registered WHAT’S IN YOUR AIR? for the different service of “providing training courses in the field of home inspection.”25 The USPTO “is required to examine all trademark applications for compliance with each and every eligibility requirement,” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016), and we must determine whether the USPTO properly refused registration of the proposed mark WHAT’S IN YOUR AIR? for the services in this application on the basis of the record here. 25 November 26, 2018 Response to Office Action at TSDR 16-19. Serial No. 87338400 - 15 - In assessing “the commercial impression [the proposed mark] makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the services,” In re Keep a Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017), we “look to the specimens and other evidence of record showing how the designation is actually used in the marketplace.” Eagle Crest, 96 USPQ2d at 1229. We begin with Applicant’s specimen, which we reproduce again below for ease of reference in following our analysis: 26 “The mere fact that a designation appears on the specimen of record does not make it a trademark.” Aerospace Optics, 78 USPQ2d at 1862. Similarly, the “fact that words are prominently displayed does not in and of itself make them registrable.” In re Wakefern Food Corp., 222 USPQ 76, 77 (TTAB 1984). “To be a mark, [a] term must 26 February 16, 2017 Specimen of Use. Serial No. 87338400 - 16 - be used in a manner calculated to project to purchasers or potential purchasers a single source of origin for the goods [or services].” Aerospace Optics, 78 USPQ2d at 1862. On its specimen, Applicant uses the question “What’s in Your Air?” to elicit information, in the form of more questions (“Mold? Pollen? Pet Dander? Allergens?”), about the types of contaminants that may be in “Your Air.” The specimen provides information in the form of answers to the question “What’s in Your Air?” instead of using the question to identify Applicant as the source of those answers, as two of the third-party webpages in the record use the question: 27 27 May 24, 2018 Office Action at TSDR 3. Our reference to these webpages should not be construed as manifesting our view that they use the question “What’s in Your Air?” as a service mark. We note them to illustrate that Applicant uses “What’s in Your Air?” solely to provide information about various types of airborne contaminants. Serial No. 87338400 - 17 - 28 Applicant’s specimen uses the question “What’s in Your Air”? to provide information identifying specific possible airborne contaminants about which home owners should be concerned. Applicant refers to three of the four contaminants identified in response to the question “What’s in Your Air?” in stating that “[i]f you are concerned about mold, pet dander, and pollen in your home, request testing from one of our professional testers in your area.” To identify the source of Applicant’s testing services, Applicant’s specimen uses the mark , which appears on the webpage’s masthead and on the shirt of a person who appears to be “one of our professional testers.” It is settled that “an advertisement or similar material can bear more than one mark without diminishing the identifying function of each,” In re Morganroth, 208 USPQ 284, 287 (TTAB 1980), 28Id. at TSDR 11. Serial No. 87338400 - 18 - but the “salient question is whether the designation in question, as used, will be recognized in itself as an indication of origin for the particular . . . service.” Id. The answer here is no. Applicant uses the question “What’s in Your Air?” on the specimen simply as language, not as branding. The question (coupled with the answers that it elicits) tells viewers why they should use “indoor air quality testing services” and what the tester may find, but not who the tester is. As discussed and shown above, the record contains a number of examples of similar use of the question “What’s in your air?” or a close variant in connection with air quality-related goods and services. Applicant’s several critiques of this evidence are not persuasive. 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,” Eagle Crest, 96 USPQ2d at 1229, but contrary to Applicant’s suggestion, 7 TTABVUE 14-20; 10 TTABVUE 5-8, there is no minimum number of third-party uses required to show that a proposed mark is informational in nature and is not likely to be perceived as a trademark. Keep a Breast Found., 123 USPQ2d at 1879-80 (relying principally on the applicant’s specimens of use to determine that the applied-for mark failed to function as a service mark for the identified services). The number of third-party uses in the record here is sufficient to corroborate the conclusion based on Applicant’s specimen that WHAT’S IN YOUR AIR? would not be viewed as a service mark when used by Applicant for the services identified in the involved application. Serial No. 87338400 - 19 - In addition, and again contrary to Applicant’s suggestion, 7 TTABVUE 14-20; 10 TTABVUE 5-8, the third-party uses need not be for the exact services for which Applicant seeks registration to be probative of how WHAT’S IN YOUR AIR? would be perceived by consumers of Applicant’s services. Indeed, third-party uses of a term do not even need to be in connection with goods or services per se to be probative of the non-trademark nature of the term. DePorter, 129 USPQ2d at 1302 (uses of term #MAGICNUMBER108 in social media supported finding that term did not function as a trademark for various clothing items); Manco, 24 USPQ2d at 1939-42 (uses of term THINK GREEN in news articles supported finding that term did not function as a trademark for a variety of paper goods and weatherstripping). The third-party uses of “What’s in Your Air?” for the various air-quality related goods and services as they are described by Applicant itself, 7 TTABVUE 14-20; 10 TTABVUE 5-8,29 are probative of how consumers would understand WHAT’S IN YOUR AIR when used by Applicant for “inspecting buildings for the existence of mold” and “indoor air quality testing services.” The third-party uses reinforce the informational, non-source identifying nature of the question “What’s in Your Air?” as it appears on Applicant’s website. The proposed mark WHAT’S IN YOUR AIR? “fails to function as a mark not only because of the informational nature of the term, but also because of the way it appears on the specimen.” Aerospace Optics, 78 USPQ2d at 1864. 29 These include mechanical and electronic air filter products, a webinar regarding airborne contaminants, a contaminant filter product, air monitoring pods, filters and UV air purifiers, a rental air sampling machine, air duct cleaning services, an air purification system, air testing kits, air quality testing services, and laboratory services. They all use the answers to the question “What’s in Your Air?” to promote the sale of goods and services to improve air quality offered under various marks. Serial No. 87338400 - 20 - Decision: The refusal to register is affirmed.