IP Law Daily, TRADEMARK—TTAB: FIRST LOOK not functional as a service mark based on wide informational use, (Dec 17, 2024)

By Justin Marcus Smith, J.D.

Consumers would not have associated the words with the applicant’s services or perceived the applicant as the source of such services.

In a non-precedential decision, the term FIRST LOOK only emphasized generic informational meaning to consumers about early opportunities to buy any kind of new products or services, affirmed the Trademark Trial and Appeal Board (T.T.A.B.) on appeal of an examining attorney’s final denial of registration on the Supplemental Register. FIRST LOOK would not serve to distinguish the applicant’s services from those of others or identify the applicant as the source. It was non-functional as a mark. The type of membership was not the issue, and the same non-functionality applied to luxury goods inasmuch as the examining attorney’s evidence took account of how luxury product and service businesses use the term (In re The RealReal, Inc., No. 97232753 (T.T.A.B. Dec. 11, 2024)).

Background. Applicant The RealReal, Inc. (RealReal) appealed a trademark examining attorney’s final refusal to register the term FIRST LOOK as a service mark on the Supplemental Register for use in connection with membership club retail discount services in International Class 35. The examining attorney found the mark generic and non-functional as a mark.

RealReal had initially applied for FIRST LOOK registration on the Principal Register asserting distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), with five or more years of substantially exclusive and continuous use in commerce. On that initial application, the examining attorney denied registration due to mere descriptiveness. The examining attorney also found the applicant’s Section 2(f) affidavit asserting acquired distinctiveness was not enough to overcome refusal because the mark was “highly descriptive” of the applicant’s services.

After final refusal on the Principal Register, the applicant sought registration on the Supplemental Register and, at length, faced final refusal on that register, too. The applicant appealed and was denied reconsideration of the Supplemental Register refusals. The appeal resumed, but the T.T.A.B. affirmed based on failure to function as a mark, only. The T.T.A.B. did not specifically reach the question of whether the mark was too generic.

No function. The T.T.A.B. affirmed denial of registration where it found the examining attorney’s evidence showed similar use of the widely-used FIRST LOOK term across a variety of industries. The evidence provided ample support for the examining attorney’s contention on denial of registration that consumers will view FIRST LOOK as a term that merely provides information about services offered. The term did not “distinctly” point to origin.

The T.T.A.B. further analyzed that FIRST LOOK is in wide use to describe a particular benefit to members, i.e., the opportunity to be the first to see new products or services. The first opportunity to see services often comes with an opportunity to buy at exclusive membership discount rates. The application even acknowledged this. Moreover, the meaning in wide use matched the applicant’s own use of the wording in its specimen of use, as juxtaposed with the words EARLY ACCESS.

The T.T.A.B. began its analysis with a finding that the Supplemental Register application did not place any limit on the services identified; therefore, the relevant public would comprise all potential buyers of the goods and services.

The T.T.A.B. found the examining attorney relied first on Merriam-Webster definitions of FIRST and LOOK. The examining attorney also provided Wikipedia evidence that “first-look deal” is a “term of art” that refers to “any contract” with a pre-emption right, right of first refusal, or right of first offer to another party given the first opportunity to buy outright something either new or returning to the market after an absence. In addition, internet evidence showed FIRST LOOK in use by, according to the T.T.A.B. opinion, “at least 31 parties” engaged in retail membership services promotion, including, among others, the heavily-advertised Lovesac and Just for Men retail enterprises.

Evidence of meaning. The applicant urged that the examining attorney did not provide evidence that the ordinary meaning of FIRST LOOK includes offering discounts for goods. Again, the applicant came close to acknowledging this. The applicant additionally asserted that even if that were true, the various business who use the phrase use it differently. In other words, a FIRST LOOK does not necessarily entail a discount.

The T.T.A.B. found this argument “misplaced” because the examining attorney “rightly” noted the type of membership program was not the issue. The issue was whether consumers would even perceive FIRST LOOK as a service mark. Consumers would view the words as informational, only, and that meant FIRST LOOK was the type of expression that anyone should be able to use.

The applicant additionally argued that the majority of the examining attorney’s evidence did not show how potential buyers of luxury goods would perceive FIRST LOOK. Again, the T.T.A.B. disagreed. Here, the T.T.A.B. noted the examining attorney’s evidence spanned a variety of industries, including those that arguably involve luxury goods, like “Tommy Hilfiger, Williams Sonoma, Crate & Barrel and others.”

The Case is Serial No. 97232753.

Judge: Lebow, M.

Attorneys: Andrew C. Palmer (Adibi IP Group, PC) for RealReal, Inc. Jacob Magit for the USPTO.

Companies: RealReal, Inc.

Cases: Trademark USPTO