IP Law Daily, TRADEMARK—TTAB: Proposed RIBBONS OF HOPE mark used on packages of pasta is unregistrable, (Jul 21, 2020)

By Cheryl Beise, J.D.

Consumers would perceive the phrase as indicating support for cancer awareness and research.

An examining attorney’s refusal to register the mark RIBBONS OF HOPE, in standard characters, on packaging for SAN GIORGIO pasta for failure to function as a mark has been affirmed by the Trademark Trial and Appeal Board. The Board agreed that the phrase merely informed consumers that a portion of the proceeds from their purchase of the applicants’ products supported cancer awareness and research efforts (In re Riviana Foods Inc., July 20, 2020, Hudis, J.).

Applicant Riviana Foods Inc. applied to register on the Principal Register the proposed mark RIBBONS OF HOPE (in standard characters) for "pasta" in International Class 30. After reviewing the applicant’s specimens, the Trademark Examining Attorney refused registration under Trademark Act Sections 1, 2, 3, and 45, on the ground that the mark, as applied to the goods identified in the application, is a slogan or term that does not function as a trademark. According to the examining attorney, the proposed RIBBONS OF HOPE mark is "an informational social, political, religious, or similar kind of message that merely conveys support of, admiration for, or affiliation with the ideals conveyed by the message." The Examining Attorney submitted nine examples of third parties using the designation RIBBON(S) OF HOPE in their names, as part of cancer awareness, women’s awareness, or fund-raising campaigns.

The applicant’s representative specimens of use consisted of photographs of a point-of-sale display featuring boxes of pasta. On the top left of the display, below the applicant’s SAN GIORGIO & Design mark, the text states "50¢ Donation Per Sale." On the top right of the display below the 77¢/ea. unit price and the designation "San Giorgio Ribbons of Hope," it states "for every sale of San Giorgio Ribbons for Hope pasta during September 2017, 50¢ will be donated to the Children’s Cancer Foundation to support pediatric cancer research." On each box presented on the display, the most prominent wording is SAN GIORGIO; the next most prominent is the phrase PASTA FOR A CAUSE; and the least prominent is the proposed mark RIBBONS OF HOPE. In the specimen to the right, on the top right of the point-of purchase display, it says "September is Cancer Awareness Month."

In determining whether a designation functions as a mark, the critical inquiry is how the relevant public would perceive the designation, the Board noted. To make this determination, the Board looks to specimens and other record evidence showing how the designation actually is used in the marketplace. "Thus, the determinative factor as far as registrability is concerned is the manner in which the mark actually is used," the Board said.

A review of the applicant’s specimens and other evidence of record showing how the RIBBONS OF HOPE designation actually was used in the marketplace led the Board to conclude that the proposed mark is commonly used, and the public would not perceive it as identifying only one source or recognize it as a trademark for the applicant’s goods

Based on the specimens, the Board found that consumers would perceive the applicant’s SAN GIORGIO & Design mark as the designation of source. The applicant’s proposed mark, on the other hand, merely informed consumers that a portion of the proceeds from their purchase of the applicants’ products supports cancer awareness and research efforts. "Moreover, Applicant’s use of RIBBONS OF HOPE is very much like the third party uses of RIBBON(S) OF HOPE in non-profit organization names, as part of cancer awareness or women’s awareness, or as part of fund raising campaigns," the Board said. "The uses demonstrate that consumers are familiar with the phrase to signify support of these causes, and would not recognize RIBBONS OF HOPE as a source-indicator."

The applicant cited two prior third-party registrations as evidence of registrability of its proposed mark—one for the mark TWO HEARTS RIBBON FOR HOPE & Design and one for RIBBONS OF HOPE COFFEE "GROUNDS TO HELP" & Design. The latter registration, however, had been cancelled and did not constitute evidence that the mark was a source-indicator. The Board was not persuaded by the existence of one third-party registration. Not only are prior registrations are not binding on the Board, but the cited registration was distinguishable from the applicant’s standard character mark. The registered mark featured the additional wording "TWO HEARTS" and an image of a Teddy Bear which, along with the wording, was superimposed on a large light blue ribbon.

The Board accordingly affirmed the refusal to register the applicant’s proposed RIBBONS OF HOPE mark, on the grounds that it fails to function as a trademark for the applicant’s goods.

The case is Serial No. 87414879.

Attorneys: Ronald E. Shapiro (Shapiro and Silverstein PLLC) for Riviana Foods Inc. Anthony Rinker, Trademark Examining Attorney, USPTO.

Companies: Riviana Foods Inc.

Cases: Trademark GCNNews USPTO