Leadership concept - big fish leading school of tropical fishes

Though an office action refusing registration can be disappointing, the road doesn’t have to end there, as shown by In Re Black Card LLC, where the TTAB recently reversed the decision of an examining attorney.

Black Card filed to register the trademark FOLLOW THE LEADER in several different classes, including those for credit card incentive programs, travel information and ticket reservation. The PTO’s examining attorney initially said that “follow the leader” doesn’t serve as a trademark because it’s a common phrase. To prove its point, the Trademark Office provided many examples of uses featuring that phrase in a wide variety of situations and circumstances — from the children’s game, to a teenager’s video game, to TED talks about business leadership. 

In response, the applicant pointed to third-party registrations that included “follow the leader” to show that the phrase could serve as a trademark for a variety of goods and services. Unfortunately for the applicant, all of them had been canceled or had expired, so that was not the best evidence. 

However, in its reversal, the Board agreed with the applicant: because “follow the leader” was used in so many contexts — including those shown in the Examining Attorney’s evidence — that indicated that the phrase did not have one commonplace meaning. So, the mark might serve as a unique identifier. The Board also noted that because the application at issue was based on intent-to-use, the EA’s speculating that it would not be used as a trademark was premature; Black Card had not even provided a specimen of use yet.

The Board also noted that the appellate briefs had over 100 pages of exhibits attached. The Board emphasized that’s not how they do things. If evidence wasn’t filed as part of the underlying application and petition, the TTAB will not accept what is introduced on appeal. The panel considered it very annoying to have to wade through papers and determine what had actually been available for the Examining Attorney’s consideration. Let the appellant and appellee be aware: Everything has to get into the record before filing an appeal.

The court was also critical of some repetitious phrases of the same words. Arranging travel tours for others, namely, was set forth twice in the application. Because the applicant did not address that refusal for that class in its appeal, and failed to preserve the issue, the Board struck that entire class of services from the registration. It seemed to me a very harsh result, and as close as the TTAB could come to splitting the baby, so both sides could feel as if they got something from going to the courthouse, as it were.

This seems like the right result to me. It’s a good thing that you can take a common phrase and potentially use it for uncommon purposes. 

About the Author

Kaufman & Kahn kaufman@kaufmankahn.com 10 Grand Central, 155 East 44th Street, 19th Floor New York, NY 10017 Tel. (212) 293-5556 Fax. (212) 355-5009