Wal-Mart Stores, Inc.

Trademark Trial and Appeal Board

Jan 11, 2019

No. 86261962 (T.T.A.B. Jan. 11, 2019)

This Opinion is a
Precedent of the TTAB

Hearing: November 30, 2017 Mailed: January 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wal-Mart Stores, Inc.
_____

Serial No. 86261962
_____

Gary J. Rinkerman, Brian A. Coleman and Philip J. Cardinale of Drinker Biddle &
Reath LLP, for Wal-Mart Stores, Inc.

Barbara Brown, Trademark Examining Attorney1, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Mermelstein, Lykos and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Wal-Mart Stores, Inc., (“Applicant”) seeks registration on the Principal Register
of the mark INVESTING IN AMERICAN JOBS (in standard characters) for:
promoting public awareness for goods made or assembled
by American workers; Retail store services featuring a
wide variety of consumer goods; Retail grocery stores;
Retail store services featuring a wide variety of consumer
goods of others; Retail store services featuring electronics,
appliances, indoor and outdoor furniture, home décor,

1 This application was originally assigned to Trademark Examining Attorney Sui Q. Duong
but subsequently reassigned to Trademark Examining Attorney Barbara Brown who
represented the USPTO in this appeal.
Serial No. 86261962
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health, beauty and personal care products, household
essentials, apparel, home improvement products, grilling
products, entertainment recordings, video games, books
and publications, musical instruments, office supplies, arts
and craft supplies; online retail store services featuring a
wide variety of consumer goods; Online retail grocery
stores; Online retail store services featuring a wide variety
of consumer goods of others; Online retail store services
featuring electronics, appliances, indoor and outdoor
furniture, grilling products, home improvement products,
home décor, health, beauty and personal care products,
household essentials, apparel, entertainment recordings,
video games, books and publications, musical instruments,
office supplies, arts and craft supplies; Retail and on-line
grocery store services featuring pickup, in-store pickup and
home delivery service; Retail store services featuring
convenience store items and gasoline; Convenience store
services in International Class 35.2
The Trademark Examining Attorney refused registration under Sections 1-3 and
45 of the Trademark Act, 15 U.S.C. §§ 1051-1053, 1127, on the ground that the phrase
INVESTING IN AMERICAN JOBS fails to function as a mark for the applied-for
services because it is merely informational and commonly used as a slogan in
advertising and promotional efforts to signify businesses’ engagement in activities to
encourage development of employment opportunities in the United States and
promote the U.S. economy.
When the refusal was made final, Applicant filed a notice of appeal and requested
reconsideration. After the Examining Attorney denied the request for

2 Application Serial No. 86261962 was filed on April 24, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. A Statement of Use was filed on March 17, 2015, alleging first
use of the mark in commerce at least as early as February 28, 2014.

Serial No. 86261962
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reconsideration, the appeal was resumed. Applicant and the Examining Attorney
filed briefs and presented oral argument. We affirm the refusal to register.
Failure to Function as a Mark
“Before there can be registration, there must be a trademark.” In re Roberts, 87
USPQ2d 1474, 1478 (TTAB 2008) (quoting In re Bose Corp, 546 F.2d 893, 192 USPQ
213, 215 (CCPA 1976)); see also D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710,
1716 (TTAB 2016). We look first to the definition of a “service mark” which is defined
as any word, name, symbol, or device, or any combination thereof–
(1) used by a person, or
(2) …
to identify and distinguish the services of one person,
including a unique service, from the services of others and
to indicate the source of the services, even if that source is
unknown. …
Section 45 of the Trademark Act, 15 U.S.C. § 1127.
Section 2 of the Trademark Act, 15 U.S.C. § 1052, connotes that a “trademark”3
must in fact function as a trademark, i.e., indicate source, to be eligible for
registration:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration on the principal register on account of its
nature unless … . (emphasis added).

3 Section 3 of the Trademark Act, 15 U.S.C. § 1053, recognizes service marks as being
registrable in the same manner and with the same effect as trademarks. In re Wakefern Food
Corp., 222 USPQ 76, 77 (TTAB 1984).
Serial No. 86261962
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Not every word or symbol which appears in connection with an entity’s services
functions as a service mark. In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381
(TTAB 1992); In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987). Thus,
a threshold issue in some cases (like this one) is whether the phrase in question in
fact functions to identify the source of the services recited in the application and
distinguish them from the services of others or, instead, would be perceived merely
as communicating the ordinary meaning of the words to consumers. To put this
inquiry in context, it is helpful to note that we, our primary reviewing court (the
Federal Circuit and its predecessor the Court of Customs and Patent Appeals), and
other federal appeals courts, draw a distinction between words used to “identify and
distinguish” source, and words used in their ordinarily-understood meaning to convey
information other than source-identification. For example:
The words GUARANTEED STARTING “are well
understood, English words in common use” that, in the
context of “advertisements displayed by an automobile
service station” would be understood in their ordinary
meaning rather than read as having “some special meaning
distinguishing the services advertised from similar
services of other station operators.” In re Standard Oil Co.,
275 F.2d 945, 125 USPQ 227, 229 (CCPA 1960);
The words YOU HAVE MAIL to indicate that an AOL
email service user, in fact, has email in his or her email-
box (i.e., the words YOU HAVE MAIL “fall[ ] within the
heartland of common meaning and usage” of those words
rather than identifying and distinguishing AOL’s email
services from those of other providers, and therefore are
not enforceable trademarks. Am. Online, Inc. v. AT&T
Corp., 243 F.3d 812, 57 USPQ2d 1902, 1909 (4th Cir. 2001);
“[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
Serial No. 86261962
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‘sealed with a kiss’ is a fixture of the language” and thus is
“non-trademark use” in connection with a lipstick
promotional display. Cosmetically Sealed Indus. Inc. v.
Chesebrough-Pond’s USA Co., 125 F.3d 28, 43 USPQ2d
1956, 1958 (2d Cir. 1997);
THE BEST BEER IN AMERICA was held unregistrable
for beer and ale because the mark would be perceived as a
common, laudatory advertising phrase and not a
trademark. In re Boston Beer Co., 198 F.3d 1370, 53
USPQ2d 1056, 1058-59 (Fed. Cir. 1999);
ONCE A MARINE, ALWAYS A MARINE would not be
perceived as a trademark for clothing but rather as an
informational slogan “to express support, admiration or
affiliation with the Marines.” In re Eagle Crest, 96 USPQ2d
1227, 1232 (TTAB 2010);
DRIVE SAFELY was held unregistrable because it would
be perceived only as an everyday, commonplace safety
admonition and not as a trademark for automobiles and
structural parts. In re Volvo Cars of N. Am., 46 USPQ2d
1455, 1461 (TTAB 1998);
PROUDLY MADE IN USA for electric shavers and parts
would be perceived not as a source indicator but instead as
an informational slogan. In re Remington Prods., 3
USPQ2d at 1715; and
THINK GREEN for mailing and shipping boxes, and for
weatherstripping, would not be perceived as an indicator of
source, but simply as a slogan of environmental awareness
and ecological consciousness. In re Manco Inc., 24 USPQ2d
1062, 1066 (TTAB 1992).
With this background, we now turn to consider the evidence. A critical element in
determining whether a term or phrase is a service mark is the commercial impression
the term or phrase makes on the relevant public, i.e., whether the phrase sought to
be registered would be perceived as a mark identifying the source of the services, or
as something else. See, e.g., D.C. One Wholesaler v. Chien, 120 USPQ2d at 1713. To
Serial No. 86261962
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make this determination, we look to the specimens and other evidence of record
showing the phrase used in the marketplace to determine how consumers likely
would perceive the subject matter sought to be registered. See In re Bose, 192 USPQ
at 216; In re Eagle Crest, 96 USPQ2d at 1229; In re Phoseon Tech. Inc., 103 USPQ2d
1822, 1828 (TTAB 2012); In re Roberts, 87 USPQ2d at 1478; In re Volvo Cars, 46
USPQ2d at 1459; In re Safariland, 24 USPQ2d at 1381; In re Remington Prods., 3
USPQ2d at 1715; In re Wakefern Food Corp., 222 USPQ at 77; In re Morganroth, 208
USPQ 284, 287 (TTAB 1980). We first consider the evidence of Applicant’s use and
then the evidence of third-party use.
A. Applicant’s Use
Applicant’s specimen (see below) shows INVESTING IN AMERICAN JOBS,
together with the “Walmart & the Spark Design” mark, used on shelf-talker signage
located in Applicant’s retail stores and positioned in close proximity to goods that it
designates as made by American workers4:

4 November 18, 2015 Response to Office Action at 11-12. Citations to the prosecution history
in the application are to the downloadable .pdf version of the Trademark Status & Document
Retrieval Database (TSDR).
Serial No. 86261962
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Applicant submitted evidence explaining that, as used on this shelf-talker
specimen (along with other displays), INVESTING IN AMERICAN JOBS “indicates
that the service area and/or designated offering of goods features products made or
assembled in America.”5 Applicant also uses INVESTING IN AMERICAN JOBS on
its website “to promote awareness of goods made or assembled by U.S. workers … as
well as to promote gatherings for U.S. manufacturers hosted by [Applicant] that have
been branded with the text INVESTING IN AMERICAN JOBS.”6 For example, the
webpage entitled “Investing in American Jobs” states that “We believe we can create
more American jobs by supporting more American manufacturing…Together we can
help spark a revitalization of U.S.-based manufacturing. By making production more

5 Declaration of Joseph Taliaferro, Senior Director of Brand ¶ 5, January 4, 2017 Request for
Reconsideration at TSDR 125.
6 Id; see also Request for Reconsideration at TSDR 26-29 “Investing in American Jobs” title
on Applicant’s website; at TSDR 40 for text of speech to U.S. Conference of Mayors on
January 23, 2014, titled “Creating Opportunity by Investing in American Jobs” posted on
Applicant’s website; and at TSDR 50-66 (also submitted with March 3, 2017, Request for
Reconsideration Denied at TSDR 51) “Walmart * Investing in American Jobs” and “Investing
in American Jobs at Walmart” title of articles by Applicant.
Serial No. 86261962
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affordable and feasible in the United States, we can bring our customers more U.S.-
made products and manufacturers can create more jobs in America.”7
The mere fact that a phrase proposed for registration appears on the specimens of
record does not establish its use as a service mark. See In re Safariland Hunting, 24
USPQ2d at 1381. As we pointed out in Remington Prods., 3 USPQ2d at 1715:
[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 purchasers or potential purchasers a
single source or origin for the goods in question. Mere intent
that a term function as a trademark is not enough in and of
itself, any more than attachment of the trademark symbol
would be, to make a term a trademark.

The slogan INVESTING IN AMERICAN JOBS is like other statements that
would ordinarily be used in business or industry, or by certain segments of the public
generally, to convey support for American-made goods, and thus would not be
recognized as indicating source and are not registrable. See, e.g., In re Remington
Prods., 3 USPQ2d at 1715 (PROUDLY MADE IN USA for electric shavers and parts
thereof would not be recognized as source indicator); see also In re Eagle Crest, 96
USPQ2d at 1232 (ONCE A MARINE, ALWAYS A MARINE for clothing); In re Volvo
Cars, 46 USPQ2d at 1461 (DRIVE SAFELY for automobiles ); In re Manco, 24
USPQ2d at 1941 (THINK GREEN for mailing and shipping boxes and for
weatherstripping); In re Niagara Frontier Servs., Inc., 221 USPQ 284, 285 (TTAB

7 , attached to the
December 14, 2015 Office Action.
Serial No. 86261962
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1983) (WE MAKE IT, YOU BAKE IT! for supermarket store services); In re Tilcon
Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) (WATCH THAT CHILD for construction
materials); In re Morganroth, 208 USPQ at 288 (NATUR-ALL-IZE YOUR HAIR
COLORING for hair styling salon services). These slogans all are informational in
nature, expressing various sentiments using words that convey their ordinary
meanings rather than indicating source.
Similarly, we find that consumers would perceive INVESTING IN AMERICAN
JOBS as merely an informational statement that Applicant is selling certain goods
that are made or assembled in America in areas of the store where the signage
appears. It would not be perceived as a service mark for “promoting public awareness
for goods made or assembled by American workers” and the various retail store
services recited in the application, but instead would be perceived as informing
consumers that the goods are made or assembled by U.S. workers and expressing
enthusiasm for the creation of jobs in the United States. The text on Applicant’s
website confirms the merely informational nature of the phrase. Thus, the
commonplace meaning imparted by the phrase INVESTING IN AMERICAN JOBS
would be the meaning impressed upon the purchasing public.8

8 This is further amplified by the fact that the specimen also bears another designation that
clearly identifies source, namely, the “Walmart & the Spark Design” mark. See, e.g., In re J.
Hungerford Smith Co., 279 F.2d 694, 126 USPQ 372, 373 (CCPA 1960) (where specimen bore
the applicant’s house marks “J. Hungerford Smith’s” and “J H S” as well as the applied-for
term BURGUNDY on flavoring syrup made from Burgundy cherries, the Board correctly
found that the term BURGUNDY was “not used in a trademark sense”).
Serial No. 86261962
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B. Third-Party Usage
Common use of a phrase by third parties merely for the purpose of imparting
information makes it less likely that the public will perceive it as identifying a single
commercial source and less likely that it will be recognized by purchasers as a
trademark. See, e.g., In re Eagle Crest, 96 USPQ2d at 1229; Reed v. Amoco Oil Co.,
611 F. Supp. 9, 225 USPQ 876, 877 (M.D. Tenn. 1984); see also In re Boston Beer, 53
USPQ2d at 1058. Although we deem the evidence of Applicant’s use of the phrase
INVESTING IN AMERICAN JOBS sufficient to find that it does not function as a
service mark for “promoting public awareness for goods made or assembled by
American workers” and the wide variety of retail store services listed in the
application, the Examining Attorney also placed in the record many examples that
third parties in several industries commonly use the phrase “investing in American
jobs” to convey the same general idea (supporting American jobs) as does Applicant,
which demonstrates the public perception of the phrase as merely informational:
1. Uses in connection with products offered for sale:
• US Appliance®9
GE Appliances Made In USA
US Appliance is proud to offer products from GE
Appliances. While not every GE product is made in the
USA it is clear that GE is committed to manufacturing

9 December 14, 2015 Office Action at TSDR 21; March 3, 2017 Request for Reconsideration
Denied at TSDR 10.
Serial No. 86261962
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many of their products in the USA and investing in
American Jobs.10
http://www.us-appliance.com/geappliancesmadeinusa
.html (12/13/2015)
• INDIEGOGO11
Short Summary
Ben Waxman along with his fiancé Whitney Reynolds, and
parents, Dory and Dan Waxman are co-founders of
American Roots. AR is a 100% American made textile
company producing high quality Polartec fleece outer wear.
…
The Impact
By contributing to the American Roots campaign you are
investing in people. You are investing in American jobs.
You are investing in a movement….
https://www.indiegogo.com/projects/american-roots-
creating-jobs-in-the-usa#/ (7/7/2016)
• Green Light Renewable Services12
Why should you invest in a solar energy system?
…
Invest in the American economy
We strive to provide equipment made here in America. By
investing in a solar PV system through Green Light, you
are investing in American jobs and the economy.
http://www.greenlightrenew.com/gosolar (7/7/2016)

10 The phrase “investing in American jobs” is emphasized in each of the cited sources for the
reader’s convenience.
11 July 7, 2016 Office Action at TSDR 5.
12 Id. at TSDR 6.
Serial No. 86261962
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• Absolutely organic baby13
Holy Lamb Organics Wool Cradle Mattress
…
Product Description
…
The wool in this mattress comes from US sheep farmers.
When you purchase this cradle mattress you are investing
in American jobs and helping to preserve and sustain the
farmer’s way of life. …
http://www.absolutelyorganicbaby.com/holy-lamb-
organics-wool-cradle-mattress/ (7/7/2016)
• SHATTERLABELS.com14
Investing in American Jobs
We at ShatterLabels.com believe in making a difference
and supporting the issues that our customers and
communities care about …
http://shatterlabels.com/investing-in-american-jobs
(2/27/2017)
2. Uses in titles and text of media and news articles:
• Nippon Sharyo Manufacturing Shop 3 shows that investing
in American rail is investing in American jobs15
In Rochelle, Illinois, Nippon Sharyo already has 260 men
and women working at its railcar assembly plant. …
http://blogarchive.dot.gov/blog-archive/secretaryeblog/
2013/06/investing-in-rail-means-investing-in-american-
jobs-and-american-workers.html# (12/13/2015)

13 Id. at TSDR 8.
14 March 3, 2017 Request for Reconsideration Denied at TSDR 4.
15 December 14, 2015 Office Action at TSDR 16.
Serial No. 86261962
- 13 -
• CGI’s U.S. Onshore Delivery Model16
…
Investing in American jobs, talent and communities
CGI is dedicated to creating jobs in U.S. communities and
we partner with the area’s local colleges and universities to
help bring well-trained students into the workforce. …
CGI Group Inc. brochure, January 2017
• President Obama Promotes Local Jobs and Tourism While
Protecting National Treasures17
… In the Organ Mountains-Desert Peaks region alone,
recent independent studies show that today’s designation
could double the number of visitors to the area and
generate $7.4 million in new economic activity each year.
By taking this step, the President is investing in
American jobs and American businesses. …
https://www.whitehouse.gov/blog/2014/05/23/presiden
t-obama-promotes-local-jobs-and-tourism-while-protectin
g-national-treasures (12/13/2015)
• Triangle Coalition for STEM Education18
Stem Education News
May 2, 2013
Discovery Launches New, Free STEM Education
Resources
…
“As President Obama said at the latest White House
Science Fair, when we inspire students to excel in math
and science, we are investing in American jobs and
industries of the future,” said John P. Holdren, Assistant
to the President for Science and Technology and Director

16 March 3, 2017 Request for Reconsideration Denied at TSDR 35.
17 December 14, 2015 Office Action at TSDR 15.
18 Id. at TSDR 17.
Serial No. 86261962
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of the White House Office of Science and Technology Policy.
…
http://www.trianglecoalition.org/bulletin/may-2-2013
(12/13/2015)
• Investing19
Frenemy China Helping American Job Market
Long seen as the arch enemy to the America job market,
China is now at least becoming more friend than foe. …
And so that means China is getting richer, and they are
buying up American products and their companies are
investing in U.S. companies. By default, they are
investing in American jobs. …
http://www.forbes.com/sites/kenrapoza/2013/05/03/fre
nemy-china-helping-american-job-market/ (12/12/2015)
• The Detroit Bureau20
UAW Makes Note of GM’s Improved Profitability
Union looking for its share of the money during talks.
…Cathy Clegg, GM’s vice president of labor relations, has
credited the union with helping to boost the quality of GM’s
vehicles and the company has made several
announcements during the winter and spring that
highlighted the company’s commitment to investing in
American jobs and American workers. …
http://www.thedetroitbureau.com/2015/07/uaw-makes-
note-of-gms-improved-profitability/ (12/13/2015)
• Breathe Healthier Air21
Solar Heating in Stuart, FL by Breathe Healthier Air

19 Id. at TSDR 18.
20 Id. at TSDR 19.
21 Id. at TSDR 20; March 3, 2017 Request for Reconsideration Denied at TSDR 27.
Serial No. 86261962
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Using the sun as a source of heating is nothing new. … A
Growing Industry: Solar heating systems and other solar
technologies are on the rise, which means the solar
industry creates new jobs all the time. Investing in this
technology means investing in American jobs. …
http://www.breathehealthierair.com/heating/solar-
heating/ (12/13/2015)
• Purchasing Product From Quality Clothing Brands22
Written by Feltraiger–September 24, 2015
Quality clothing brands have become a bit of a hot topic
lately, but it’s what Feltraiger was founded on. …
The Solution: Purchase From Quality Clothing Brands
Purchasing from American made quality clothing brands is
a great way to solve this problem. When you shop with
smaller American brands you are investing in American
jobs and the American work force. …
http://www.feltraiger.com/blogs/news/51527940-
purchasing-product-from-quality-clothing-brands
(7/7/2016)
• PediSand A Hands Free Foot File23
Big News, PediSand A Hands Free Foot File got a deal with
Walmart! …They are investing in American Jobs,
especially in rural areas. …
https://www.facebook.com/PediSand-A-Hands-Free-
Foot-File-1543988579211161/ (7/7/2016)
• Ethanol Producer Magazine24
Higher Blends Best For America’s Energy Future

22 July 7, 2016 Office Action at TSDR 7.
23 Id. at TSDR 9.
24 Id. at TSDR 10.
Serial No. 86261962
- 16 -
The greatest challenge the ethanol industry faces is
making higher blends of our product available to
consumers nationwide. …
For anyone who is paying attention, E15 is the clear choice.
Consumers can rest easy knowing that by using
homegrown renewable fuels they are investing in
American jobs and the American economy. …
http://ethanolproducer.com/articles/11244/higher-
blends-best-for-americanundefineds-energy-future
(7/7/2016)
• Linkedin®
Investing in American jobs25
Rich King, President Abstrax Llc.
Abstrax would like to extend its gratitude to all of our new
clients who decided, quality does matter.
In just the last few months [w]e have been able to add 25
full-time positions to the American workforce! …
https://www.linkedin.com/pulse/investing-american-
jobs-rich-king (2/27/2017)
• wksu 89.726
Trade Ranks High Among Ohio Voter Concerns in This
Election
… [Alan Tonelson, an economist who has written about
Trump’s proposal to rewrite NAFTA] … complicating the
argument that trade is either good or bad, noted that
Honda, a Japanese-owned auto manufacturer, is
investing in American jobs as domestic companies like
Ford and General Motors have laid off tens of thousands
since 2000. …

25 March 3, 2017 Request for Reconsideration Denied at TSDR 7.
26 Id. at TSDR 16.
Serial No. 86261962
- 17 -
http://wsku.org/post/trade-ranks-high-among-ohio-
voter-concerns-election#stream/0 (3/3/2017)
• Automotive Minute: Nissan’s 30-year commitment to U.S.
manufacturing continues to grow27
…Additionally, Nissan’s Smyrna, Tenn., operation makes
parts to be exported with over 1.1 million U.S. made
vehicles having been sent around the world in the last 30
years.
That Vehicle Assembly Plant isn’t the only place Nissan is
investing in American jobs. In 1997 Nissan opened its
Decherd Powertrain Plant just down the road…
http://www.bizjournals.com/atlanta/news/2016/06/15
/automotive-minute-nissan-s-30-year-commitment-to-
u.html (03/03/2017)
• Tampa Bay Times28
Column: Welcome to Donald Trump’s power of now
… Trump’s news to the workers of Carrier was gloriously
sudden and delivered like a campaign speech filled with
achievement, attitude and perfectly unpolished rhetoric.
My summary of his clear message:
We are going to make investing in American jobs, job 1.
And when we’re finished, …
http:www.tampabay.com/opinion/columns/column-
welcome-to-donald-trumps-power-of-now/2305191
(03/03/2017)
• Toyota joins in, announces 400 new jobs in Indiana29
The company will invest more than $600 million into its
Princeton, Indiana plant.

27 Id. at TSDR 23.
28 Id. at TSDR 38.
29 Id. at TSDR 41.
Serial No. 86261962
- 18 -
Ford and GM aren’t only two automakers investing in
American jobs. Toyota today announced an expansion of
its Princeton, Indiana plant …
http://www.motor1.com/news/134367/toyota-
announces-us-investment/ (03/03/2017)
• Vermont Furniture Blog30
Craftsman Furniture: An Investment You Can Appreciate
…
When you invest your money in tomorrow’s Vermont made
antiques, you are also investing in American jobs and
in the future of American craft. …
http://vermontfurnitureblog.com/craftsman-furniture-
investment/ (03/03/2017)
The Examining Attorney contends the foregoing evidence shows the slogan
INVESTING IN AMERICAN JOBS is widely used to refer to the “broad social,
economic or altruistic goal of encouraging the development of employment
opportunities in the United States, and therefore, it conveys an informational
message about the business using the slogan, rather than functioning to distinguish
the services of one provider from those of others with this same goal.”31 According to
the Examining Attorney, because consumers consistently encounter this phrase used
in an informational manner by many different service providers, they would not
perceive the phrase as identifying a single commercial source.32

30 Id. at TSDR 48.
31 Examining Attorney’s Appeal Brief 12 TTABVUE 10.
32 Examining Attorney’s Appeal Brief 12 TTABVUE 6.
Serial No. 86261962
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Applicant contends that INVESTING IN AMERICAN JOBS is more than merely
informational and functions as a source indicator for its services. Applicant asserts
that the following evidence, which it provided, establishes that consumers associate
the phrase with Applicant and should be given more weight in gauging public
perception than the Examining Attorney’s evidence: (1) “top line search results”
displaying its use of the slogan;33 (2) estimated expenditures of over $10 million since
2014 in connection with its asserted mark; (3) attendance by 5,700 people at
promotional events featuring the slogan; and (4) more than 300,000 visits to its
website, which displays the slogan “to promote its commitment to goods made or
assembled in the United States.”34 In Applicant’s view, its evidence is more
objectively selected and representative of the marketplace than what Applicant
characterizes as the “assortment of non-trademark uses of ‘. . . investing in American
jobs’ presented by the Examiner [that] merely shows that this sequence of words may
be used in ordinary speech, especially in contexts such as the news articles and press
releases cited by the Examiner that by their nature, tend to be perceived by readers
as informational and tend to be less trafficked on the Internet than the sites
demonstrating consistent trademark use over several years such as that engaged in
by Appellant.”35 Applicant also contends that the Examining Attorney’s evidence
shows that the uses exist and is not probative to show common use of the phrase

33 Applicant’s Appeal Brief 10 TTABVUE 11-12, citing Exhibits B and C to the June 13, 2016
Response to Office Action and Ex. 1 to the January 4, 2017 Request for Reconsideration.
34 Applicant’s Appeal Brief 10 TTABVUE 13, citing Ex. 4 (Declaration of Joseph Taliaferro)
to the January 4, 2017 Request for Reconsideration.
35 Applicant’s Appeal Brief 10 TTABVUE 10.
Serial No. 86261962
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because it does not include the search terms used, which could have specifically
targeted informational types of uses.36 In Applicant’s view, “something more” than
that the uses exist is necessary, such as, “information as to the context as to the
incidence rate of the phrase within the searches (e.g., how many examples were
eliminated from contention) or consumer engagement (e.g., whether the cited
webpages have significant web traffic).”37
We agree with the Examining Attorney that the third-party usage evidence shows
the public would perceive INVESTING IN AMERICAN JOBS merely as an
informational slogan rather than as a source indicator. We have carefully considered
Applicant’s arguments but they fail to persuade us that the phrase functions as a
service mark for the applied-for services.
Beginning with Applicant’s challenges to the competence of the evidence
introduced by the Examining Attorney, it is well settled that articles obtained from
the Internet, websites, and blog posts are admissible as evidence of information
available to the consuming public and of the way in which a term is being used or
would be understood by the relevant public. See In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Internet evidence is generally
admissible and may be considered for purposes of evaluating a trademark.”); see also
In re Geller, 751 F.3d 1355, 110 USPQ2d 1867, 1870 (Fed. Cir. 2014) (the Board, in
noting that “the probative value of the blog comments … is less than that of the

36 Applicant’s Appeal Brief 10 TTABVUE 9.
37 Id.
Serial No. 86261962
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articles themselves due to the anonymity of the authors,” did not err in concluding
that such comments shed light on the meaning of the term “Islamisation”); In re Reed
Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.03
(June 2018) (“Material obtained through the Internet or from websites is acceptable
as evidence in ex parte proceedings.”); TRADEMARK MANUAL OF EXAMINATION
PROCEDURE (TMEP) § 710.01(b) (Oct. 2018) (“Articles downloaded from the Internet
are admissible as evidence of information available to the general public, and of the
way in which a term is being used by the public.”). Inasmuch as the Examining
Attorney’s evidence consists of copies of complete webpages, it is probative of the
meaning the phrase “investing in American jobs” has to consumers and how they
would perceive it when used by Applicant for Applicant’s services.38 Nothing more is
required for the kinds of evidence provided by the Examining Attorney to support a
refusal that the public would perceive the slogan INVESTING IN AMERICAN JOBS
to function not as a mark but instead as a merely informational expression of support
for American workers.39

38 Internet evidence that includes the URL and the date the material was accessed is
generally admissible and may be considered for purposes of evaluating a trademark. In re I-
Coat Co., LLC., 126 USPQ2d 1730, 1733 (TTAB 2018); In re Mueller Sports Medicine, Inc.,
126 USPQ2d 1584, 1587 (TTAB 2018). Web-based information that includes greater context
for the use of a term, such as a complete webpage, will have greater probative value in
determining how a term will be perceived. In re Bayer, 82 USPQ2d at 1833; see also In re
Reed Elsevier Props., 82 USPQ2d at 1381; In re King Koil Licensing Co., 79 USPQ2d 1048,
1050 (TTAB 2006).
39 Applicant contends that if the “[Examining Attorney]’s position were maintained,
numerous registered marks would fail” citing, for example, the registered marks, BEST BUY,
STAYIN HOME AND LOVIN IT!, THINKING DIFFERENTLY, “because they can be
presented in non-trademark context.” Applicant’s Appeal Brief 10 TTABVUE 11, also citing
Serial No. 86261962
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Indeed, there is no requirement that the Examining Attorney establish that a
particular online source or website “has significant web traffic” to establish its
competence, just as with print articles, the Examining Attorney need not establish
the circulation of the magazine or newspaper or that the cited article has actually
been read.40 USPTO examining attorneys are trained to use reliable sources, but
certain Internet evidence may warrant additional scrutiny, and applicants are always
free, in rebuttal, to challenge the probative value of a particular website cited in
support of a refusal with evidence that may impact the probative value the Board
accords the source. See In re Country Music Assn. Inc., 100 USPQ2d 1824, 1829-1830
(TTAB 2011) (finding “some merit in applicant’s argument that the examining
attorney’s Internet evidence of third-party usages are relatively obscure” based on

to footnote 16. Those slogan marks Applicant cites entirely differ from its INVESTING IN
AMERICAN JOBS slogan thus rendering Applicant’s argument to be entirely speculative.
Additionally, its proposed mark, unlike the marks it cites, identifies an important and
current societal issue of advancing employment opportunities in the United States through
the promotion of American manufacturing, tourism, infrastructure development and
education.
40 Applicant’s citation to In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (explaining need
for context in evaluating Internet search results) is misplaced. 10 TTABVUE 9. The applicant
in Thomas submitted Internet search summaries to show the “number and nature of similar
marks in use on similar goods” which was found unpersuasive as it consisted of “Google hits
for ‘black market’ with jewelry, without any context for the hits.… [S]ome of the website
summaries in the list are so abbreviated that the context of use, such as the specific nature
of the business or the particular goods or services offered on the various websites or in
connection with the term ‘black market,’ is unclear.” 79 USPQ2d at 1026. The Board found
that the search summaries did not adequately show the context in which the mark was used,
and “without evidence as to the extent of third-party use, such as how long the websites have
been operational or the extent of public exposure to the sites, the probative value of this
evidence is minimal.” Id. Here, by contrast, the Examining Attorney has submitted more
than mere Internet search summaries. Moreover, the Internet evidence is introduced to show
use of the phrase “investing in American jobs” in a non-trademark, ordinary-meaning
manner, not to show weakness of a mark by third-party use of the phrase as a mark as in
Thomas.
Serial No. 86261962
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data obtained from the www.Alexa.com web site measuring the daily visitors and
page views for applicant’s website and each third-party website). However, simply
criticizing the evidence in the manner Applicant does is not enough and does not
prove anything. Even websites that are not frequently visited still demonstrate how
the authors use the term or phrase and how that term or phase will be perceived by
the readers.
We also are not troubled by Applicant’s suggestion that the Examining Attorney’s
search strategy may have increased the likelihood of returning uses of the involved
phrase that are informational in nature. Examining attorneys are expected to search
for relevant evidence and that type of search and evidence would be relevant for a
refusal based on the phrase being merely informational.
We find that the third-party usage examples provided by the Examining Attorney
show that people are exposed to the ordinary meaning of the phrase “investing in
American jobs” in everyday life from many different sources to promote the same
message and ideas as Applicant. The evidence shows common usage of the phrase
“investing in American jobs” by commercial businesses in various industries, as well
as in media articles and blogs, to convey the goal or aim of investing in U.S. business
to promote employment opportunities in America. The fact that the phrase “investing
in American jobs” is used in the titles and texts of numerous articles for a wide range
of activities that result in various employment opportunities for American workers,
as well as promotion of the U.S. economy, highlights the emphasis being placed on
American jobs. The Board has previously acknowledged the public policy
Serial No. 86261962
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considerations in allowing businesses to encourage purchasers to give preference to
American-made products, and affirmed the refusal to register the merely
informational slogan PROUDLY MADE IN THE USA, recognizing, “It is common
knowledge that … American manufacturers are anxious to encourage purchasers to
give preference to American products.” In re Remington Prods., 3 USPQ2d at 1715.
The evidence submitted by the Examining Attorney reflects that the closely related
goal of American businesses to encourage purchasers to give preference to products
made or assembled by American workers is also widely touted and pursued.
Turning to Applicant’s argument that its evidence is entitled to more weight than
the Examining Attorney’s evidence, we disagree. None of Applicant’s evidence
demonstrates that the public primarily perceives INVESTING IN AMERICAN JOBS
as a mark for the applied-for services rather than the basic informational message
conveyed by the phrase.
Applicant’s listing of excerpts from its website as “top Internet search results for
the verbiage”41 shed no light on what impression the term INVESTING IN
AMERICAN JOBS, when served up in those “top” results, makes on consumers. The
Google search result summaries illustrate little more than Applicant’s size,
marketing and promotional efforts, and the quality of the search engine optimization
techniques it claims to use.42 Moreover, several of the listings in the search-result
summaries show that Applicant is using the phrase “investing in American jobs”

41 Applicant’s Appeal Brief 10 TTABVUE 10.
42 Applicant’s Appeal Brief 10 TTABVUE 11, citing to Exhibit 3 of the January 4, 2017
Request for Reconsideration regarding Google’s statements on PageRank.
Serial No. 86261962
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precisely within the core meaning of the words and not as a source-identifier.
Examples include: “At Walmart, we’re taking action and creating opportunity by
investing in American jobs.”; “Walmart has announced plans to create opportunities
for American manufacturing by ‘investing in American jobs.’”; “Walmart is investing
in American jobs!”; “What does investing in American jobs mean?”43 Although those
searching the Internet may encounter the phrase in top search results that connect
to Applicant’s websites, and those websites may well have many visitors, the relevant
inquiry is not how many consumers see the phrase but whether they perceive it as a
source-identifier, and this evidence simply fails to show that.
Applicant’s evidence of corporate promotional expenditures, attendance at
Walmart events, and website traffic statistics fares no better.44 As in Remington
Products, “[w]hile applicant may have had substantial sales and advertising of its
product, that does not prove recognition by the public of the subject slogan as a
trademark.” 3 USPQ2d at 1715. Due to its informational nature, INVESTING IN
AMERICAN JOBS, like the other informational slogans referenced above, would not
be regarded as signifying the source of Applicant’s services. Not every designation
adopted with the intention that it perform a trademark function necessarily
accomplishes that purpose, even if labeled as a trademark. In re Eagle Crest, 96

43 See for example evidence submitted with the June 13, 2016 Response to Office Action at
Exhibits B and C at TSDR 62, 65.
44 See Applicant’s Appeal Brief 10 TTABVUE 13; Request for Reconsideration, Exhibit 4
Taliaferro Declaration at TSDR 125-27. See also June 13, 2016 Response to Office Action,
Exhibit D, at TSDR 67-79.
Serial No. 86261962
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USPQ2d at 1229 (citing Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ
149, 154 (TTAB 1973)); In re Volvo Cars, 46 USPQ2d at 1460-61.
We add that even a showing that consumers associate a phrase with a particular
goods or services provider does not allow the provider to remove the term from the
common lexicon. See Am. Online v. AT&T, 57 USPQ2d at 1909-10 (“Stated otherwise,
the repeated use of ordinary words functioning within the heartland of their ordinary
meaning [“You Have Mail”], and not distinctively, cannot give AOL a proprietary
right over those words, even if an association develops between the words and AOL.”)
(emphasis added); In re Wakefern Food, 222 USPQ at 79 (finding applicant’s evidence
that consumers associate WHY PAY MORE! with applicant entitled to relatively little
weight where applied-for mark does not perform the function of a trademark); In re
Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 90 (CCPA 1980) (proof that some
consumers may associate particular words with a company is not probative where a
mark is not used as a source-indicator because “[n]ot all designs or words which in
fact indicate or come to indicate source will be restricted in use to a single merchant”);
cf. In re J. Hungerford Smith, 126 USPQ at 373 (not addressing applicant’s evidence
of acquired distinctiveness because the applied-for term failed to function as a
trademark). Indeed, when evidence shows, as it does here, that others besides an
applicant are using a phrase in an informational manner, the burden on the applicant
claiming exclusive ownership and a right to exclude others from use increases. See In
re Tilcon Warren, 221 USPQ at 88 (in light of evidence that the designation failed to
function as a trademark, burden shifted to applicant to establish by competent
Serial No. 86261962
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evidence that applied-for mark serves a trademark function). Thus, even if there were
evidence that some consumers associated the phrase with Applicant, that alone would
not entitle Applicant to appropriate for itself exclusive use of an otherwise common
informational phrase and thereby attempt to prevent competitors or others from
using it to promote their efforts to support American workers.45 Cf. KP Permanent
Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838
(2004) (“there [is] no indication that the [Lanham Act] was meant to deprive
commercial speakers of the ordinary utility of descriptive words”); Park ’N Fly, Inc.
v. Dollar Park and Fly, Inc., 469 U.S. 189, 224 USPQ 327, 332 (1985) (Lanham Act
among other things prevents “commercial monopolization” of descriptive language in
the public domain).
In sum, the evidence submitted by the Examining Attorney showing widespread
use of the phrase “investing in American jobs” in an informational sense to encourage
ventures such as manufacturing of goods in the U.S. and employment in the U.S.
further supports our finding that the consuming public will not perceive INVESTING
IN AMERICAN JOBS used by Applicant for the applied-for services as an indicator
of a single source of the services. Rather, consumers will perceive the words merely

45 It has been noted that “as a matter of competitive policy, it should be close to impossible
for one competitor to achieve exclusive rights in common phrases or slogans.” In re Eagle
Crest, 96 USPQ2d at 1230 (quoting 1 J.T. McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 7:23 (4th ed. 2010)); In re Volvo Cars, 46 USPQ2d at 1460. To grant
Applicant exclusive rights for retail store services, and for promoting public awareness for
goods made or assembled by American workers, in this commonly used phrase would
interfere with the rights of other retailers to freely use the familiar phrase or variations
thereof to promote investment in the U.S. labor force.
Serial No. 86261962
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as conveying the common, informational message that Applicant, like others,
promotes American-made goods by investing in American jobs.
C. Third-Party Registrations for “INVESTING IN . . .” formative marks
Applicant also asserts “that past [US]PTO practices have overwhelmingly allowed
formulations of ‘INVESTING IN …’ to register in Class 35,” pointing to a collection
of registrations and allowed applications for what Applicant considers to be similar
marks, and that this additionally supports its contention that its “widespread usage
of INVESTING IN AMERICAN JOBS . . . sufficiently functions as a mark to entitle
it to registration.”46 Applicant contends that these prior decisions of examining
attorneys to allow registration of marks that begin with the wording “INVESTING
IN” support registrability of the applied-for slogan noting “these decisions . . . should
serve as a guide and as evidence of consumers’ perceptions in the marketplace” and
that “such registrations are much more persuasive on the current topic of
registrability than the Examiner’s proffered evidence.”47 We disagree.
At the threshold, most of the marks Applicant cites are the subject of cancelled
registrations, abandoned applications, or pending applications and none of these
categories provide probative support for Applicant’s argument.48 See In re Hartz Hotel

46 Applicant’s Appeal Brief 10 TTABVUE 14.
47 Applicant’s Appeal Brief 10 TTABVUE 15-16.
48 See June 13, 2016 Response to Office Action, Exhibit F at TSDR 84-85, 93 and January 4,
2017 Request for Reconsideration, Exhibit 6 at TSDR 135-140 regarding Registration Nos.
2686587 for INVESTING IN AMERICA & Design; 2771538 for INVESTING IN AMERICA;
3156068 for INVESTING IN AMERICA’S COMMUNITIES; 3743467 for INVESTING IN
THE WORLD’S FORESTS; 3908252 for INVESTING IN INVENTION which have been
cancelled, and Application Serial No. 85927942 for INVESTING IN PEOPLE which is
abandoned; and accordingly, have not been considered. It is well-established that an expired
Serial No. 86261962
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Servs. Inc., 102 USPQ2d 1150, 1152 n.5 (TTAB 2012) (four cancelled registrations
submitted by applicant not considered); In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1089 (TTAB 2016) (“a pending application is evidence only that the application was
filed on a certain date”); In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3
(TTAB 2006) (expired or cancelled registrations generally are evidence only of the
fact that the registrations issued).
Disregarding the cancelled or expired registrations, or applications that have
either been abandoned or have not yet matured to registrations, there are only two
active registrations in Class 35 remaining,49 Registration Nos. 3595749 for
INVESTING IN INNOVATION and 4372980 for INVESTING IN RELATIONSHIPS,
both for consulting services. Those registrations were issued at an earlier time for
different marks, for different services or goods, and based on evidence and argument
that are not of record. They are not evidence of consumers’ perception of the different
mark INVESTING IN AMERICAN JOBS for promoting public awareness for goods
made or assembled by American workers and retail store services.
Our primary reviewing court has long and consistently warned against making
factual findings in cases based on allowances by individual examining attorneys in
prior cases. See, e.g., In re Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 240

or cancelled registration is evidence of nothing but the fact that it once issued. Sunnen Prods.
Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987). The same applies to the two
pending applications Applicant cites, Application Serial Nos. 86831993 for INVESTING IN
ILLINOIS and 86838380 for INVESTING IN ILLINOIS & Design. January 4, 2017 Request
for Reconsideration, Exhibit 5 at TSDR 131-133.
49 June 13, 2016 Response to Office Action, Exhibit F at TSDR 91, 98.
Serial No. 86261962
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(CCPA 1975) (“We do not know what evidence was before the PTO when the
applications were considered, so the citations have no precedential value.”). We must
assess registrability in each case before us on its own evidentiary record. See, e.g., In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016); In re
Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In
re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the board
or this court.”).50 Additionally, registrability must be assessed based on the record of
public perception at the time registration is sought. See In re Chippendales USA Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686-1687 (Fed. Cir. 2010); In re Morton-Norwich
Prod., Inc., 671 F.2d 1332, 213 USPQ 9, 18 (CCPA 1982).
Here, our analysis must focus on Applicant’s applied-for mark and its use in the
marketplace, rather than on registrations for other marks conveying different
messages, especially when the evidence demonstrates that the phrase INVESTING
IN AMERICAN JOBS is commonly used in the marketplace to convey a particular
social and economic informational message. Accordingly, we find that the existence
of two other current registrations for different marks beginning with the words
“INVESTING IN …” for different services lacks probative force as to consumer

50 It would be pure speculation for us to try to divine, from the mere act of one examining
attorney of allowing an application to register, the reasons behind the allowance. Moreover,
examining attorneys’ decisions on individual applications do not set agency policy concerning
the governing statutes.
Serial No. 86261962
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perception of INVESTING IN AMERICAN JOBS for the applied-for services in light
of the specific evidentiary record in this case.
Conclusion
Based on the record in this case, Applicant’s proposed mark INVESTING IN
AMERICAN JOBS fails to function as a service mark for retail store services or for
promoting public awareness of goods made or assembled by American workers. As
used by Applicant, it would be perceived by customers as a merely informational
phrase, not a “merchandising short-cut” that indicates the source of Applicant’s
services and distinguishes them from those of others.
Decision: The refusal of registration under Trademark Act Sections 1, 2, 3 and
45, 15 U.S.C. §§ 1051-1053, 1127, is affirmed.