USPTO Issues Exam Guideline on Merely Informational Matter

On July 30, 2017, the USPTO issued an Examination Guideline 2-17 on Merely Informational Matter.  The Guideline is meant to assist Trademark Examining Attorney on case law relevant to trademarks and service marks which can merely be considered informational in nature only, and do not function as a source identifier for a particular good or service.  Because the nature of what constitutes informational matter is a moving target, the Examining Attorney will have further guidance in the Guidelines as to what may or may not be a registrable mark.  See TMEP 1202.04.

Informational matter in a mark is “[s]logans and other terms that are merely informational in nature, or common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry.”  TMEP 1202.04.

If a mark consists entirely of merely informational matter, the mark must be refused because it fails to function as a mark by conveying the indicia of source.  Further, a merely informational refusal cannot be overcome by amending the application to have the mark registered on the Supplemental Register, by acquiring distinctiveness, or by submission of substitute specimens.

In general, widely-used messages or everyday, ordinary messaging, in addition to messages with a social or political undertone, would qualify as being merely informational.  The Examining Attorney must document evidence to support the conclusion of a merely informational refusal.

For example, in In re Eagle Crest, Inc.,[1] Applicant sought ONCE A MARINE, ALWAYS A MARINE as a trademark in Class 25 for use on various clothing items.  However, the application was refused because the mark failed to function as a mark because a consumer could not readily identify it as the source of applicant’s clothing line.  The slogan is a very familiar Marine expression, and evidence to support this assertion was that a search engine revealed nearly 3 million hits.[2]

Another example was the well-used BOSTON STRONG mark, filed by several Boston-area companies[3] in a variety of goods and services in Classes 14, 25, 28, 30, 35, 40 and 41.  All were refused registration because they all failed to function as trademarks or service marks since all were based on a merely informational and commonplace slogan widely used in the media following the Boston Marathon bombing on April 15, 2013.[4]

All Examining Attorneys will now be expected to follow these Guidelines on merely informational marks when examining trademark/service mark applications.

[1] 96 USPQ2d 1227 (TTAB 2010).

[2] Id. at 1230.

[3] 10 applications were filed by these various companies in 2013, with Serial Nos. 86007909, 85926320, 85910709, 85911532, 85910589, 85910126, 85910031, 85909994, 85906569, and 85906495.  All were abandoned due to the merely informational rejections by the Examining Attorney.

[4] See Exam Guidelines 02-17, at A-16 – A-17.

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