Sarah Oglesby

10 February 2021

In re Miracle Tuesday, LLC

RULE: A trademark that is primarily geographically deceptively misdescriptive is not registrable.

ANALYSIS:
 A trademark is primarily geographically deceptively misdescriptive if (1) the primary
significance of the mark is a geographic location, (2) consumers are likely to believe that
that location indicates the origin of the product, (3) the product does not in fact
originate from that location, and (4) this misrepresentation is a material factor in the
consumer’s purchasing decision
 Origin can be shown by place of manufacture, place of design, or even if the goods
contain a component or ingredient from the location
 Paris is the most significant part of the mark, not “JPK” therefore the mark takes on
geographic significance
 Given Paris’s international reputation for fashion design, consumers are likely to believe
that the word Paris on the label indicates the origin of Miracle’s fashion products, which
are not made in Paris and have no connection
 The geographic misrepresentation is a material factor in consumers’ decisions to
purchase Miracle’s products

CONCLUSION: Decision affirmed.

In re Tam

RULE: The Lanham Act’s prohibition on registering disparaging trademarks is unconstitutional.

ANALYSIS:
 The government does not attempt to claim that the prohibition can survive First
Amendment analysis but rather asserts that the First Amendment does not apply,
because applicants are still able to use rejected marks in commerce
 Prohibition denies financial benefits of registering a mark and therefore burdens speech
so the First Amendment should apply
 Applying the First Amendment, the prohibition is viewpoint-based, as it will permit
registration of a mark that a particular group views positively but deny registration of a
mark that the same group views negatively
 Viewpoint-based restrictions on speech must survive strict scrutiny and can be upheld
only if the government proves that the restriction is narrowly tailored to furthering a
compelling governmental interest
CONCLUSION: Reversed and Remanded.

Blackhorse v. Pro-Football, Inc.

RULE: A trademark that may disparage a substantial composite of the group the mark
references is not registrable.

ANALYSIS:
 Courts look to three types of evidence to determine whether a mark may disparage: (1)
dictionary definitions; (2) other written works, including scholarly works and media
references; and (3) statements of the group referenced or individuals in the group
 A “substantial composite” is not necessarily a majority, when determining whether a
mark may disparage, the court views the mark from the perspective of the referenced
group, not the general public

CONCLUSION: Cancellation of the marks affirmed.

In re Vertex Group LLC

RULE: A product feature that is functional is not registrable as a trademark.

ANALYSIS:
 There are four relevant factors in determining whether a feature would affect the cost
or quality of the product: (1) whether a utility patent exists for the feature; (2) whether
the applicant’s advertising highlights the feature’s utilitarian benefits; (3) whether the
applicant’s competitors have other, similar features available to them; and (4) whether
the feature gives the applicant a simple or inexpensive method to manufacture the
product
 The sound was functional so awarding Vertex exclusive use of the sound would harm its
competitors, not registrable

CONCLUSION: Board decision affirmed.

In re Morton-Norwich Products, Inc.

RULE: A trade dress that includes functional elements is eligible for trademark protection if the
overall design of the trade dress is nonfunctional.

ANALYSIS:
 The packaging or trade dress of a product is eligible for trademark protection if: (1) the
configuration of the trade dress is nonfunctional, and (2) the design or configuration of
 the trade dress is inherently distinctive or has achieved secondary meaning as an
indication of source
 The functionality of a product’s trade dress is assessed with consideration given to the
utility or usefulness of the product’s design

CONCLUSION: TTAB decision reversed and remanded.

In re Becton, Dickinson and Company

RULE: In determining whether a proposed trademark will be non-registerable due to

functionality, the critical question is the degree of utility present in the overall design of the
trademark.

ANALYSIS:
 Under the doctrine of functionality, only nonfunctional features of a product or designs
may be claimed as a trademark
 If a feature or design includes both functional and nonfunctional elements, the court
must weigh the overall degree of utility in determining whether if fails the functionality
test
 Four factor test: (1) whether the design was the subject of a utility patent, which would
weigh toward functionality, or a design patent, which would weigh toward non-
functionality; (2) whether the producer’s advertisements promoted the functional
features of the design; (3) whether alternative designs were available; (4) whether the
design in question reflected the simplest or most cost-effective manufacturing method

CONCLUSION: Board decision affirmed.