The Board said "No" to the USPTO's refusal to register the phrase SAY YES TO WHAT'S NEXT for clothing, religious books, and "Entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of women aging and how to improve quality of life in the last quarter of life." The Examining Attorney maintained that the phrase fails to function as a source indicator because it is "a commonplace message or expression" . . . "that merely conveys an ordinary, familiar, well-recognized sentiment." The Board, however, found the USPTO's evidence insufficient. In re Lori Allen Enterprises, LLC, Serial No. 88546889 (February 12, 2021) [not precedential] (Opinion by Judge Cheryl S. Goodman).
"A critical element in determining whether a term or phrase is a trademark is the impression the term or phrase makes on the relevant public." "[E]vidence of the public's perception may be obtained from 'any competent source, such as consumer surveys, dictionaries, newspapers and other publications."'
There was no record evidence of applicant's actual use of the mark, and so the Board looked to how others used the phrase in the marketplace. "The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark."
The examining attorney maintained that this phrase "is widely used by the general public as an affirmation encouraging perseverance and positivity in the face of change" and that "multiple third parties" in a "variety of industries and businesses" use this term or expression as "an affirmation of encouragement to overcome obstacles and embrace change."
The examining attorney submitted twelve examples of use of the phrase "say yes to what's next." Three were from the same "parenting coach's women/tween group." The examples showed use of the phrase "in the context of career, personal, and parenting coaching (3), faith/ministry (2) information about leadership, success, and personal growth (4), and an advertisement about a beverage (1)." Another example came from a career coach website and a post about virtual small business coaching for women entrepreneurs.
The Board observed that evidence of use "by media and businesses in a variety of industries may be probative, and it is not necessary that the evidence show use by competitors of Applicant." However, "the evidence must be sufficiently widespread to show that the public would not perceive it as a trademark."
The Board concluded that the USPTO's evidence fell short:
The record evidence does not show use in connection with any of the type of goods (religious books and women's clothing) or services (workshops, seminars, panels, radio and television shows related to women's aging and improving quality of life) identified by Applicant, although it does show de minimis use in connection with ministry/faith groups and programs related to women's growth and success. In this case, the Examining Attorney's evidence does not rise to the level of demonstrating that use of "say yes to what's next" is so common or widespread that the consuming public would view it as a common place expression or sentiment. See Eagle Crest, 96 USPQ2d at 1230 (voluminous evidence of third-party use). Therefore, based on the present record, the Examining Attorney has not met his burden to establish that Applicant's applied-for mark, SAY YES TO WHAT'S NEXT, fails to function as a mark.
And so the Board reversed the refusal to register.
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TTABlogger comment: How many third-party uses is too many? PS: I think the term "applied-for mark" should be banished.
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