Within the realm of intellectual property, trademarks emerge as perhaps the most diverse, encompassing a kaleidoscope of distinctive words and symbols. From the iconic Nike swoosh or JUST DO IT, to the universally recognized golden arches of McDonald's, to the three-note chime of NBC, trademarks take many forms.

One thing that all trademarks have in common, though, is that they serve as unique indicators to help consumers recognize and associate specific products or services with a particular source or origin. A proposed mark that fails to fulfill this fundamental function is no trademark at all.

In a recent appeal before the Trademark Trial and Appeal Board, Kirill’s Big Brain, LLC faced a refusal to register the word mark ASSHOLES LIVE FOREVER in connection with various novelty goods. This decision serves as a poignant reminder to anyone who seeks to register a mark – while trademarks can come in all shapes and sizes, they must meet the basic statutory requirements of a trademark to be eligible for registration.

ASSHOLES LIVE FOREVER

Kirill’s Big Brain, LLC (“Applicant”) sought to register the words ASSHOLES LIVE FOREVER for various goods, including T-shirts, bags, pillowcases, shower curtains, cups, ashtrays, as well as “vacuum pumps for medical purposes.”

The Trademark Attorney, the one making the initial decision on registration, rejected the application, arguing that the applied-for mark failed to function as a trademark given it was “a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.”  The Attorney presented numerous examples of third-party uses, asserting that the mark was widely used by many parties on various goods, and therefore, it couldn’t be an indicator of source, i.e., it failed to function as a trademark.

Applicant contended that the rejection based on failure to function was an arbitray or “unfair” construct of the Trademark Office, asserting that the intended mark, ASSHOLES LIVE FOREVER, doesn't convey an “informational message.” Notably, it emphasized that the mark is not meant to communicate that anyone, including "assholes," actually live forever.

On appeal, the Board was wholly unpersuaded and rejected Applicant's argument, emphasizing that “[a]n expression need not convey a specific type of message to be inherently incapable of functioning as a mark.” Regardless of the type of message, widespread use of a term or phrase can be enough to render it incapable of functioning as a trademark.

While Applicant acknowledged that the record included multiple third-party uses of the phrase, it argued that every third-party use cited by the Examiner post-dated Applicant’s use, and thus, each of those uses is an infringing copy of a mark Applicant first created and used. Yet, despite the argument, Applicant fail to proffer any evidence demonstrating that it prominently used the mark before any third party or that it policed its rights, a crucial component to maintaining trademark rights.

The Trademark Attorney’s refusal to register cited Sections 1, 2, and 45 of the Trademark Act in support of his argument that the mark failed to function as a trademark for the goods in question. The Board affirmed, emphasizing that the Trademark Act is designed to register trademarks, not common words or expressions, and a proposed mark must meet the statutory definition of a trademark to be eligible for registration.

Consumer Perception

The heart of the matter revolved around whether the proposed mark functioned as an indicator of source. Section 45 of the Trademark Act defines a trademark as any word, name, symbol, or device used by a person to distinguish their goods and indicate the source. If a proposed mark doesn't meet this definition, it is simple, it can’t be registered.

Focusing on consumer perception, the Board considered how purchasers of the goods would view the phrase in question. If consumers view it as a merely informational slogan or phrase, i.e., a common term or phrase that consumers are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments, rather than something that distinctively points out the origin of the goods to which it is attached, the phrase fails to serve a source-indicating function.

Ultimately, the Board concluded that the proposed term was not a trademark because it was widely used as a message and consumers would in fact interpret it as a commonplace expression rather than a source indicative term associated with the Applicant, or for that matter any one source.

Takeaways

What is a trademark if it cannot indicate the source of your goods? The TTAB's ASSHOLES LIVE FOREVER decision reinforces the balance between the limited statutory monopoly that trademark owners enjoy and the fundamental requirement that no entity should be able to undermine the public’s ability to express common sentiments without paying a license fee to someone who tries to coopt a message as a source identifier.

When contemplating the adoption of a trademark for a business, it is crucial to reflect on this essential principle to ensure a strong and distinctive brand identity that can benefit from, and be eligible for, federal trademark registration.

For an example of how to overcome a refusal to register a mark based on failure to function, see Lizzo Succeeds in Reversing “100% THAT BITCH” Trademark Refusal.