The Board affirmed a refusal to register the purported mark shown below for a variety of goods in classes 28, 29, 30, 32, and 33, finding that it fails to function as a source indicator because it would be perceived as a merely ornamental use of the well-known Uncle Sam imagery rather that as a trademark. In re Uncle Sam GmbH, Application Serial No. 79187215 (July 31, 2019) [not presidential] (Opinion by Judge Marc A. Bergsman).
Examining Attorney Samuel R. Paquin contended that the purported mark does not function as a mark "because of the iconic nature and cultural significance of this specific version of Uncle Sam." Consumers will therefore not interpret that image as indicating source.
This design was created by James Montgomery Flagg in 1917 as a recruiting poster. Although Uncle Sam has been referred to has a "symbol of patriotism" and a "personification of the government of the United States," it has never been found to be an official insignia under Section 2(b) of the Lanham Act.
The USPTO has registered versions of the image for a variety of goods and services. The examining attorney submitted depcitions of Uncle Sam used in advertising - to convey the message that Uncle Sam wants the consumer to "try" the advertised goods or services. Applicant GmbH supplied an example of how the subject image will be used with its goods, conveying the same message:
GmbH argued that its proposed use of the image is consistent with the long history of use of the image for advertising purposes. The Board agreed, but found that applicant's proposed use would not likely be perceived as identifying and distinguishing its products and indicating their source.
In other words, the Flagg image of Uncle Sam, which because it extensively has been used to advertise a wide variety of goods and services, has taken on the characteristics of a common basic shape or design. See Wiley v. Am. Greetings Corp., 762 F.2d 139, 226 USPQ 101, 103-04 (1st Cir. 1985) (mark consisting of "a red heart, permanently affixed to the "left breast of a teddy bear," even if such a combination could be deemed unique, is simply a mere refinement of a red heart motif which is a commonly adopted and well-known means of ornamentation for teddy bears, other stuffed animals and toys in general).
As to the third-party registrations for marks including the Uncle Sam image, the Board pointed out once again that it is not bound by the PTO's allowance of prior registrations. Each case must be decided on its own record. "We are not estopped or disqualified from applying the statute because ... an examining attorney (or attorneys) may have overlooked a relevant statutory provision and, perhaps erroneously, allowed an application to register." In re United Trademark Holdings, Inc., 122 USPQ2d 1976 (TTAB 2017).
The record evidence did include the file histories of two prior registrations, but the Board observed that "[i]f any lesson can be gleaned from these two registrations [see marks below], it is that interplay of words and the image of Uncle Sam may form the basis of registration."
And so the Board affirmed the refusal.
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