UNITED STATES: No Love for TEXAS LOVE

The U.S. Trademark Trial and Appeal Board (TTAB) issued a precedential opinion on October 29, 2020, affirming the refusal to register TEXAS LOVE in standard characters (No. 87793802) for hats and shirts, finding that the phrase fails to function as a mark. The TTAB also rejected the applicant’s argument that the refusal to register constitutes a violation of the U.S. Constitution’s equal protection clause. In re Texas With Love, LLC, 2020 USPQ2d 11290 (TTAB 2020).

In resolving the failure to function issue, the TTAB explained that whether TEXAS LOVE functions as a trademark depends upon whether the relevant public would perceive the phrase as identifying the source of the applicant’s goods. To that end, the TTAB looked to the specimens and evidence of record demonstrating how the mark is actually used in the marketplace. Here, the applicant used the phrase on the front of hats and shirts and also on its website. Evidence from the examining attorney consisted of third-party uses of the phrase (and variations thereof) in relation to signs, decals, wall art, and shirts.

The TTAB noted that “Applicant’s specimens show trademark use.” However, it added, “that is not the only relevant inquiry…. In fact, … ‘[m]ere intent that a phrase function as a trademark is not enough in and of itself’” (quoting In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)). The TTAB then affirmed the refusal on the basis that the phrase would be perceived as merely conveying support or affinity for Texas. The TTAB also separately concluded that the phrase failed to function as a mark because it “is too commonly used by too many third parties in a variety of forms for it to identify the source of Applicant’s goods.”

On the equal protection issue, the TTAB rejected the applicant’s argument in short order. First, the TTAB considered registrations cited by the applicant for similar marks, such as CALIFORNIA LOVE. It determined that the applicant failed to provide any evidence, aside from “the bare existence of these registrations themselves,” that the U.S. Patent and Trademark Office (USPTO) treats citizens of Texas differently than citizens of other states in “contextually identical” circumstances. Second, the TTAB noted that the Federal Circuit has foreclosed the applicant’s argument by concluding that, even if such equal protection allegations were accurate, “the most Applicant could establish is that the USPTO should have rejected the other marks” (quoting In re Shinnecock Smoke Shop, 571 F.3d 1171, 1175 [Fed. Cir. 2009]).

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