IP Law Daily, TRADEMARK—TTAB: ‘Assholes’ may ‘live forever,’ but not in a trademark registration, (Jan 11, 2023)

By Thomas Long, J.D.

The commonplace expression ASSHOLES LIVE FOREVER merely conveyed a familiar sentiment and did not function as a source indicator for the products listed in an application to register the phrase.

The phrase ASSHOLES LIVE FOREVER was not registrable as a standard-character trademark for a variety of goods—including air fragrance preparations, vacuum pumps for medical purposes, coffee cups, t-shirts and other apparel, sporting goods, and ashtrays—because it was a commonplace expression that merely conveyed an ordinary, familiar, well-recognized concept or sentiment, the Trademark Trial and Appeal Board has determined. As such, the applied-for phrase did not function as a trademark for the applicant’s goods. The Board affirmed a USPTO examining attorney’s refusal to register the phrase under Sections 1, 2, and 45 of the Lanham Act. The applicant used the phrase in an ornamental, decorative manner on many of its goods, supporting the conclusion that purchasers bought the goods because the phrase conveyed a message, rather than identifying the source or origin of the products. This is the latest case in a line of Board decisions rejecting marks that comprise or contain “vulgar” terms and phrases on a “failure to function” basis, after the Supreme Court invalidated the Lanham Act Section 2(a) ground for refusing “scandalous or immoral marks” in Iancu v. Brunetti (In re Kirill's Big Brain, LLC, January 6, 2023, English, C.).

Applicant Kirill’s Big Brain, LLC, markets a wide variety of products prominently bearing the phrase ASSHOLES LIVE FOREVER. The examining attorney refused to register the phrase in connection with a wide range of disparate goods on the ground that it failed to function as a mark. In the examining attorney’s view, the applied-for phrase failed to function as a mark because it “is commonly used to refer to the sentiment that those who are considered annoying or detestable appear to outlive those who are considered positive or desirable and conveys a common expression of resignation.”

The examining attorney introduced more than 30 examples of various third-party entities using the applied-for-mark as an ornamental feature on such goods as clothing, home décor, stickers, cell phone cases, drinking glasses, bottles, and mugs. The products were sold through online retail sites Amazon, Etsy, and others. There also were examples of the proposed mark being used generally and not in connection with the applicant’s goods, such as references to tattoos, cartoons, book dialogue, sound recordings, and various blog posts.

The applicant criticized the refusal for “failure to function,” arguing that it was not needed as a separate ground for refusal because the existing structure of the Lanham Act was sufficient, and there was “the potential for too much discretion.” Also, the applicant argued that it was unfair to place the burden on the applicant to prove that its mark was not informational. The Board noted that the Lanham Act did not specifically articulate “failure to function” as a ground for refusal, but it rejected the contention that refusing an application on this basis was arbitrary or unfair, pointing out that this ground was derived from the definition of a trademark. And over 60 years ago the Court of Customs and Patent Appeals originated a long line of guidance on how the Section 45 definition of “trademark” applies to merely informational matter, including widely used commonplace expressions. “That body of law recognizes that such terms and expressions are usually taken by consumers at their ordinary meaning and are not perceived as identifying and distinguishing one party’s goods from those of others or indicating their source,” the Board said, quoting itself in its 2022 decision in In re Brunetti.

Turning to the merits, the Board said that the evidence supported the conclusion that the message ASSHOLES LIVE FOREVER was itself an important component of the product, and customers purchased the product not because of its association with a particular source but because of the message it conveys—“e.g. celebrating assholes or as resignation that assholes are ever present.” The applicant prominently displayed the phrase as an adornment on many of the goods in the involved application. “The placement, size, and dominance of the expression ASSHOLES LIVE FOREVER on Applicant’s goods is consistent with conveying a common sentiment rather than signifying a brand or indicating a source,” the Board said. “The fact that Applicant sells clothing bearing ASSHOLES LIVE FOREVER with the wording in a number of different stylizations further supports that consumers are likely to perceive the proposed mark as conveying a message rather than serving as a source identifier,” it added. The fact that the applicant’s specimens showed some use of the applied-for mark in a manner typical of trademark use did not negate the primarily ornamental use of the expression on numerous goods identified in the involved application.

The applicant failed to rebut the prima facie case presented by the examining attorney. Arguing that the phrase at issue could not be deemed “informational,” the applicant pointed out that the phrase is not literally correct or accurate and therefore did not convey any meaningful information. The Board was not persuaded, reasoning that even if the phrase did not convey a “common social, political, patriotic, religious, or laudatory message,” widespread use of the phrase was itself enough to render it incapable of functioning as an identifier of source. “Merely informational matter” included widely used commonplace terms and expressions regardless of the specific nature of the message conveyed.

The Board also determined that the applicant failed to establish that its use of the phrase pre-dated the uses cited by the examiner and that third-party users were infringing the applicant’s mark. There were examples of uses prior to the applicant’s first-use date. Moreover, even if the applicant could accurately assert that it had increased the popularity of the phrase, the applicant didn’t show that it had successfully policed any purported rights in the proposed mark. “Without such evidence, we must presume that the third-party uses are still in the marketplace and are part of the environment in which relevant consumers will encounter Applicant’s mark,” the Board said. The evidence did not indicate that the third-party users were attempting to associate themselves with the applicant.

Accordingly, the Board affirmed the refusal to register the applied-for mark.

The case is Serial No. 90033810.

Attorneys: Claire F. Hawkins (Foster Garvey P.C.) for Kirill’s Big Brain, LLC. Jacob Vigil, Trademark Examining Attorney.

Companies: Kirill’s Big Brain, LLC

Cases: Trademark USPTO GCNNews