IP Law Daily, TRADEMARK—TTAB: Refusal to register MAKE YOUR PASSION YOUR PAYCHECK reversed, (May 10, 2023)

By Donielle Tigay Stutland, J.D.

The examining attorney failed to show that the applied-for mark conveyed ordinary, familiar, or generally understood concepts, such that it could not be a source indicator.

The Trademark Trial and Appeal Board has reversed a refusal to register the mark MAKE YOUR PASSION YOUR PAYCHECK for various clothing items in International Class 25. While the examining attorney had argued that the mark is an expression commonly used by multiple sources and fails to function as a source indicator, the Board agreed with the applicant that the examining attorney’s evidence was insufficient to show that the mark has been widely used in connection with the goods at issue and that the public was so accustomed to seeing the phrase that it could not be attributed to the applicant’s goods (In re: GFactor Enterprises, LLC, May 5, 2023, Hudis, J.).

Background. On September 4, 2020, GFactor Enterprises, LLC d/b/a Gfactor Films (Applicant) filed an application to register the mark MAKE YOUR PASSION YOUR PAYCHECK for the Hats; T-shirts; Hoodies; and Knit face masks being in International Class 25, as well as goods and services related to books and educational services in Class 16 and Class 41. The examining attorney refused registration for the goods and services identified in Classes 16 and 41 based on the likelihood of confusion under Trademark Act Section 2(d). The examining attorney also refused to register the mark for the goods and services listed in Class 25, indicating that it the proposed mark is “a commonplace term, message, or expression, widely used by a variety of sources, that merely conveys an ordinary, familiar, well-recognized concept or sentiment.” The examining attorney determined that the proposed mark is a “slogan or term that does not function as a trademark or service mark to identify and distinguish Applicant’s goods or services from the goods or services of others and to indicate the source of those goods and services.” The Applicant appealed, arguing that the evidence presented by the examining attorney was not sufficient evidence to prove that the mark failed to function.

Failure to function. In analyzing whether MAKE YOUR PASSION YOUR PAYCHECK failed to function as a trademark, the Board highlighted, “Matter may … fail to function as a trademark if it is a common term or phrase that consumers of the goods identified in the application are accustomed to seeing used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments.” Further, the Board indicated that the relevant inquiry in determining whether a proposed mark functions as a trademark is “how the relevant public perceives the term sought to be registered.”

The examining attorney’s evidence focused on third-party uses of MAKE YOUR PASSION YOUR PAYCHECK, including 14 examples of various websites, blog entries and books, mostly in the self-help space or offering coaching services. One of the third-party uses did show the term on a t-shirt.

In contrast, the Applicant argued that the examining attorney’s evidence and use by third parties was not "determinative of how the [MAKE YOUR PASSION YOUR PAYCHECK] mark is used with Applicant’s own products[,]” nor did it “offer any comparison of how the mark is perceived by the general public” and it does “not support the concept of [the] wording being widely understood[.]” The Applicant asserted, “[t]he Examining Attorney’s evidence is not enough to support the high standard needed to prove nationwide interest or a phrase that is spoken daily without much thought.”

The Board agreed with the Applicant and found the examining attorney’s evidence insufficient to establish that the MAKE YOUR PASSION YOUR PAYCHECK term is so widely used by a variety of sources that it merely conveys an ordinary, familiar, well-recognized concept or sentiment. Wrote the Board, “the record does not uniformly demonstrate commonplace third-party use of MAKE YOUR PASSION YOUR PAYCHECK, and its variants, in relation to the common topic of self-help and motivation to convey the well understood message that one should do what they love, and make money doing so.”

The Board reversed the refusal to register and stated, “we cannot say that, in view of the wide usage of the phrase, consumers of Applicant’s goods are consistently accustomed to seeing this phrase used by various sources to convey ordinary, familiar, or generally understood concepts or sentiments such that they could not attribute the phrase to a single source.”

The Case is Serial No. 90976324.

Attorneys: Andrea H. Evans (Law Firm of Andrea Hence Evans, LLC) for GFactor Enterprises, LLC d/b/a GFactor Films. Theodore Sotland for the USPTO.

Companies: GFactor Enterprises, LLC d/b/a GFactor Films

Cases: Trademark USPTO