“Assholes live forever.” A ubiquitous truth, it may be. But, unfortunately for Kirill's Big Brain, LLC, ubiquitous truths often aren’t eligible for trademark registration. Here’s what you need to know:
The issue.Linda Finegold website (NSFW), applied to register the ASSHOLES LIVE FOREVER for a variety of merchandise. The Trademark Examiner refused registration on the grounds that the phrase brand fails to function as a trademark.
Applicant Kirill’s Big Brain, which operates the
Kirill appealed the refusal before the Trademark Trial and Appeal Board. Among other things, it argued that “failure to function” is not a basis for refusal, but an “unfair,” arbitrary construct of the Trademark Office that puts undue burdens on applicants to prove otherwise.
The Board affirmed the refusal to register, remarking that, although the words “failure to function” do not appear in the Trademark Act, the basis for the refusal arises from the definition of the word “trademark,” which (spoiler alert) is in the Act. In short, a trademark is a word, phrase, image, etc. that identifies the source of the goods offered under that mark. A word or phrase is not a trademark when consumers view it as merely informational or when consumers “are accustomed to seeing [it] used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments”. This is not an unfair or arbitrary construct. “[W]idespread use of a term or phrase may be enough to render it incapable of functioning as a trademark, regardless of the type of message.”
Turning to the merits of this application, the Examiner submitted evidence showing more than 30 third-parties using ASSHOLES LIVE FOREVER ornamentally on apparel and other goods in Kirill’s application. Though Kirill was able to exclude a few of those examples, more than two dozen remained. According to the Board, this was sufficient evidence that “the message ASSHOLES LIVE FOREVER ‘itself is an important component of the product and customers purchase the product’ not associating it with a particular source but because of the message it conveys, e.g. celebrating assholes or as resignation that assholes are ever present.”
Kirill’s own use of the phrase on its products (e.g., in different stylizations on its apparel) supported this conclusion, even though Kirill also made more traditional trademark use (e.g., prominently as a brand on its website).
This decision highlights the tension between the limited monopoly granted to trademark owners, and the need to ensure that no one brand can control the use of important phrases (like beauty, importance is in the eye of the beholder). Words and phrases of the moment, such as “covfefe” or “Black Lives Matter,” are unlikely to be granted trademark protection, no matter how they are used.
Brands looking to avoid failure to function refusals should first conduct internet searches to determine whether the phrase is being used by others in an informational manner, remembering that Trademark Examiners will perform these same searches themselves. Brands should also consider incorporating other elements into their marks, such as designs or additional words, though it may still be necessary to disclaim rights in the informational portions of those marks before registration is feasible.
The bonus takeaway for trademark nerds.
Though it wasn’t enough here, attacking a Trademark Examiner’s evidence can go a long way to undermining the basis for a refusal. Here, Kirill was able to knock out five examples of third-party use by submitting evidence that the third parties were not currently using the phrase or by arguing that, because the third-parties used the phrase in the same or similar font as Kirill, they were examples of infringement of Kirill’s rights and not relevant third party use. On the other hand, Kirill had some of its own evidence stricken because it ran afoul of a Board rule: third-party registrations for conceptually similar marks were not considered because Kirill failed to submit them in itsprosecution of the application.
In re Kirill's Big Brain, LLC,
Serial No. 90033810 (January 6, 2023)(not precedential).
I had trouble selecting an appropriate image for this post, so please enjoy this one instead.
“[T]he starting point for registration is the statutory definition of a trademark. A word that fails to distinguish goods or services does not meet the statutory definition of a trademark, and thus cannot be registered.”