Mayweather Promotions is the promotional company for Floyd Mayweather Jr., former professional boxer, multiple-time world champion, and holder of an undefeated 50-0 record in the ring. Yet, before the United States Patent and Trademark Office's ("USPTO") Trademark Trial and Appeal Board ("TTAB"), Mayweather's company does not have a record to match its namesake. In In re Mayweather Promotions, LLC, the TTAB issued a precedential decision affirming the refusal to register the mark PAST PRESENT FUTURE for use on t-shirts on the ground that the applied-for mark is merely a commonplace expression that consumers identify with a particular sentiment rather than a particular source.
Mayweather Promotions ("MP") attempted to register PAST PRESENT FUTURE for use on t-shirts. The USPTO Examining Attorney refused registration on the ground that the applied-for mark is a widely used expression that serves to communicate a sentiment rather than identify the source of the marked t-shirts. In support, the Examining Attorney cited numerous uses of the phrase "past, present, future," ranging from t-shirts to scientific studies, local papers to horse racing, and self-help websites. The Examining Attorney also cited a Wikipedia page listing more than twenty books, albums, and songs titled "past, present, and future." Based on this evidence, the Examining Attorney concluded that registration would be inappropriate because "past, present, future . . . is commonly used to refer to describe or recount the general history/background, the current state and the direction/projection of a person, animal, idea, or concept in a lineal fashion based on a timeline."
MP appealed, raising four arguments. First, MP argued that within the boxing industry, "past, present, future" is identified with Floyd Mayweather and MP because MP has spent ten years promoting the phrase as Floyd Mayweather's slogan, making the mark "highly distinctive and well known" among boxing fans. However, since the mark was for use on t-shirts, the TTAB found that the relevant market could not be limited to boxing fans, and instead needed to include the t-shirt buying public at large. Consequently, widespread third-party use of the mark on t-shirts meant there was no association among the t-shirt buying public between the mark and MP. Plus, MP failed to produce evidence supporting a decade long association between the mark and the company, or between the mark and Floyd Mayweather.
Second, MP argued that third-party use of the mark did not automatically mean the mark was not associated with MP. According to MP, the Examining Attorney's evidence failed to establish that the relevant purchasing public did not associate the mark with MP. The TTAB explained that MP's argument missed the point: the registration was not refused because the mark would convey incorrect information about the source of the goods. Rather, the registration was refused because it would convey no information about the source of the goods, only the sentiment "past, present, future." Nevertheless, the TTAB also approved the Examining Attorney's evidence of widespread third-party use as probative of whether a mark is merely a widely used phrase.
Third, MP pointed to third-party registrations, alongside its own registration for "past, present, and future of sports & entertainment," as proof that "sports related slogans" are routinely registered. The TTAB reasoned that this argument was irrelevant because registration was rejected based on the lack of evidence that the applied-for mark would be perceived as an identifier, not a general notion that sports-related marks are unregistrable.
Finally, MP argued that the mark was registerable as a secondary source identifier. According to MP, the mark informed the purchasing public that the goods were connected with Floyd Mayweather and his company, akin to how a sponsorship works. The TTAB explained that although secondary source evidence may be appropriate where decorative or ornamental designs are also source-identifying, here, registration was not refused because the mark was ornamental, so secondary source evidence was likewise irrelevant.
Ultimately, the TTAB affirmed the Examining Attorney's refusal to register because the mark "past, present, future" is widely used to convey a sentiment of continuity, rendering it a common message not associated with MP.
The case is In re Mayweather Promotions, LLC, Serial No. 86753084 (TTAB October 29, 2020).
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