Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1130676
`04/30/2021
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91267937
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`Party
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`Correspondence
`Address
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`Plaintiff
`Alpha Kappa Alpha Sorority
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`PAULA JILL KRASNY
`LEVENFEL PEARLSTEIN, LLC
`2 N. LASALLE STREET
`SUITE 1300
`CHICAGO, IL 60602
`UNITED STATES
`Primary Email: pjkdocket@lplegal.com
`Secondary Email(s): jhirsh@lplegal.com, rwilliamson@lplegal.com,
`lwiley@lplegal.com
`3124767585
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`Submission
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`Filer's Name
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`Filer's email
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`Other Motions/Submissions
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`Paula Jill Krasny
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`pjkdocket@lplegal.com, jhirsh@lplegal.com, rwilliamson@lplegal.com,
`lwiley@lplegal.com
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`Signature
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`Date
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`/Paula Jill Krasny/
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`04/30/2021
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`Attachments
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`AKA Response to Motion to Dismiss.pdf(1663504 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of:
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`Application: 90012428
`Mark: STROLL TO THE POLLS
`Application Date: June 20, 2020
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`) Opposition No. 91267937
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`Alpha Kappa Alpha Sorority,
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`v.
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`Stroll to the Polls, Inc.,
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`Opposer,
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`Applicant.
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`RESPONSE TO APPLICANT’S MOTION TO DISMISS
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`Opposer, Alpha Kappa Alpha Sorority (“AKA” or “Opposer”), by and through its counsel,
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`Levenfeld Pearlstein, LLC, submits this Response to Applicant’s Motion to Dismiss (the
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`“Motion”), and states as follows:
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`PRELIMINARY STATEMENT
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`No matter how noble a trademark applicant’s cause may be, that cause does not entitle the
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`applicant to obtain a trademark registration to which it is not legally entitled. In this case, Applicant
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`is not entitled to a trademark registration.
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`Not only does AKA have standing to bring the Notice of Opposition (the “Opposition”),
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`each and every claim set forth in the Opposition is properly pleaded and plausible on its face. Even
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`a cursory review of the Opposition establishes that AKA has satisfied the relatively low bar for
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`LP 17291155.8 \ 44356-124996
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`pleading its claims. Applicant forgets that Opposer AKA is required to plead, but not prove, its
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`claims in the Opposition. Fed. R. Civ. P. (“Rule”) 8(a); Trademark Trial and Appeal Board Manual
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`of Procedure (“TBMP”) § 309.03(a)(2) (“[e]videntiary matters…should not be pleaded in a
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`complaint. They are matters for proof, not for pleading”).
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`Misrepresenting the law and facts, Applicant creates a false narrative in an effort to
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`manipulate the PTO into granting it a trademark registration to which it is not legally entitled. In
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`an effort to distract from the facts and the law, Applicant insinuates that the Opposition should be
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`dismissed because of the Covid-19 pandemic and the January 6, 2021 insurrection on the Capitol.
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`(Motion p. 2.) While Applicant may be skilled at misdirection, distraction, and smoke and mirrors,
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`this strategy does not work, for the sole issue in this proceeding is the registrability of the phrase
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`STROLL TO THE POLLS.
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`The policy behind the Lanham Act is to protect consumers, not to grant deceptive claims
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`to trademark rights so that applicants like this can thwart legitimate third party uses of a slogan
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`and attempt to extract license fees to which it is not entitled. See 15 U.S.C. § 1127 (“[t]he intent
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`of this chapter is to regulate commerce within the control of Congress by making actionable the
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`deceptive and misleading use of marks in such commerce…[and] to protect persons engaged in
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`such commerce against unfair competition…”). As explained in its Motion, Applicant “licenses
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`its mark and devotes resources to combating infringement of the same.” (Motion ¶ 4.)
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`Accordingly, for the reasons set forth herein, the Motion should be denied or, alternatively,
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`AKA should be granted leave to amend the Notice of Opposition.
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`FACTUAL BACKGROUND
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`Opposer AKA’s grounds for opposition are Section 2(d) prior use and likelihood of
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`confusion, or in the alternative, failure to function as a trademark, and fraudulent procurement.
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`2
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`Opposer is a historically Black Sorority, and a member of the Divine Nine, which are nine
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`African American fraternity and sorority organizations. (Opposition ¶ 1.) Applicant’s founder,
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`who signed the trademark application, is a member of the AKA Sorority. (Opposition ¶¶ 6-7.)
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`Opposer’s Section 2(d) claim is based on the fact that the parties use STROLL TO THE
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`POLLS in connection with voter engagement-related services. These services are related to
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`Applicant’s Class 25 goods, which Applicant uses to promote its voter engagement services.
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`(Opposition ¶¶ 8-9, 12.) Opposer and members of the Divine Nine have used the phrase STROLL
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`TO THE POLLS long prior to the date Applicant’s founder filed the application. (Opposition ¶¶
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`3, 11.)
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`Once Vice President Kamala Harris, an AKA Sorority member, was on the November 2020
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`Presidential ballot, the use of STROLL TO THE POLLS expanded beyond Opposer AKA and the
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`Divine Nine. It became a national rallying cry for voter mobilization. (Opposition ¶¶ 4-5 and
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`Exhibits A and B thereto.) Thus, in the alternative, as an informational political slogan, the phrase
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`fails to function as a trademark. In addition, as used by Applicant on its products, the slogan
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`functions as mere ornamentation.
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`Finally, because Applicant’s founder, upon information and belief, knew of AKA’s prior
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`rights in and third party uses of STROLL TO THE POLLS when she signed the Declaration, she
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`knowingly withheld facts from the PTO in an effort to fraudulently procure a registration.
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`(Opposition ¶¶ 7, 10, 16-20.)
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`Clearly, AKA has a real interest in this proceeding, and granting a registration to Applicant
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`will result in serious harm to AKA in that AKA would no longer be able to potentially use or seek
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`registration of a mark that it has been using decades prior to Applicant’s alleged dates of first use.
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`3
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`ARGUMENT
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`Because each and every claim in the Opposition is clearly plausible on its face, Opposer
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`has satisfied the pleading requirements set forth in Bell Atlantic Corp. v. Twombly, 550 U.S. 544,
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`(2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). The TTAB adopts the same Twombly/Ashcroft
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`plausibility standard in opposition and cancellation proceedings. See, e.g., Caymus Vineyards v.
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`Caymus Medical Inc., 107 USPQ2d 1519, 2013 WL 6665451 (TTAB 2013) (use of plausibility
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`standard in a TTAB proceeding in denying motion to dismiss fraud claim); TBMP § 503 (“To
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`survive a motion to dismiss, a complaint must ‘state a claim to relief that is plausible on its
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`face.’”)(citations omitted.)
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`Plausibility is not a high standard. All that is required is enough factual matter such that,
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`when accepted as true, the complaint states “...a claim to relief that is plausible on its
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`face....” Twombly, 550 U.S. at 570. In analyzing the complaint, a court must construe the pleading
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`in a light most favorable to the plaintiff, taking the well-pleaded factual allegations as true, and
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`drawing all reasonable inferences from those allegations in plaintiff's favor. Erickson v. Pardus,
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`551 U.S. 89, 93 (2007); Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490,
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`492-93 (Fed. Cir. 1987) (“[f]or purposes of ruling on a motion to dismiss for want of standing,
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`both the Board and reviewing courts must accept as true all material allegations of the complaint,
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`and must construe the complaint in favor of the complaining party”).
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`Further, a motion challenging the sufficiency of a complaint under Rule12(b) must be read
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`in the context of Rule 8(a), which sets out the general rules for pleading. Rule 8(a) mandates that
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`the plaintiff make, inter alia, “a short and plain statement of the claim.” Fed. R. Civ. P. 8(a)(2).
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`Likewise, an “opposition must set forth a short and plain statement showing why the opposer
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`believes he, she or it would be damaged by the registration of the opposed mark and state the
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`4
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`grounds for opposition.” 37 C.F.R. § 2.104(a).
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`Because, as explained further infra, each and every claim in the Opposition is
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`clearly plausible on its face, AKA has satisfied the pleading requirements set forth in Twombly,
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`550 U.S. 544 and Ashcroft, 556 U.S. 662.
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`I. AKA HAS STANDING TO OPPOSE
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`The standing requirements for filing an opposition proceeding are lax:
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`At the pleading stage, all that is required is that a plaintiff allege facts sufficient to
`show a "real interest" in the proceeding, and a "reasonable basis" for its belief that
`it would suffer some kind of damage if the mark is registered…. However, there is
`no requirement that actual damage be pleaded or proved, or that plaintiff show a
`personal interest in the proceeding different or "beyond that of the general public"
`in order to establish standing or to prevail in an opposition or cancellation
`proceeding.
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`TBMP § 309.03(b); Hole in 1 Drinks, Inc. v. Michael Lajtay, 2018 WL 4358952 at *4 (TTAB
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`2018) (liberal threshold for determining standing).
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`A. Applicant Misapprehends Standing in Administrative Proceedings.
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`Overlooking the above standing requirements, Applicant argues that standing is dictated
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`by whether a “real controversy between the parties” exists. (Motion ¶ 13.) The case or controversy
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`standard, however, is clearly inapplicable here because this is an administrative proceeding.
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`Association of Data Processing Serv. Orgs., Inc. v. Camp, 397 U.S. 150, 153 (1970) (finding
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`standing, “Administrative Procedure Act grants standing to a person ‘aggrieved by agency action
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`within the meaning of a relevant statute’”); Paleteria La Michoacana, Inc. v. Productos Lacteos
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`Tocumbo S.A. De C.V., 247 F. Supp. 3d 76, 97 (D.D.C. 2017), aff’d, 743 Fed. Appx. 457 (D.C.
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`Cir. 2018) (finding standing in a TTAB cancellation action, “[s]tatutory law, not the ‘case or
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`controversy’ requirement, determines the standing requirements for matters brought before an
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`agency” like the TTAB). The fact that this is an administrative proceeding debunks Applicant’s
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`misguided standing threshold.
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`B. Applicant’s Argument That Opposer Needs to Allege Class 25 Rights in and/or a
`Trademark Filing for STROLL TO THE POLLS Is Wrong.
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`Applicant further contends that it is entitled to dismissal because AKA is required to have
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`Class 25 rights in and/or a trademark filing for STROLL TO THE POLLS. (Motion at ¶¶ 2, 14-
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`19, 21-23.) This is unequivocally wrong.
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`The law is clear, well-established and beyond dispute that a person is not required to own
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`a trademark to have standing to oppose. 15 U.S.C. § 1063(a) (“[a]ny person who believes that he
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`would be damaged by the registration of a mark upon the principal register…may … file an
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`opposition …stating the grounds therefor”); 37 C.F.R. § 2.101 (b) (“[a]ny person who believes
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`that he, she or it would be damaged by the registration of a mark on the Principal Register may file
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`an opposition addressed to the Trademark Trial and Appeal Board”); Jewelers Vigilance, 823 F.2d
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`at 493 (To establish standing, “[p]roprietary rights in the opposer are not required.”); TBMP §
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`309.03(b) (“A plaintiff need not assert proprietary rights in a term in order to have standing.”)
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`Contrary to Applicant’s incorrect statements about the necessity of owning a trademark, to
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`establish standing, the opposer need only demonstrate that it has a real interest in the proceeding
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`and reasonable basis for belief that it would suffer damage as a result of the registration.1 Jewelers
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`Vigilance, 823 F.2d at 492. In other words, the opposer only needs to “reasonably believe that it is
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`likely to be damaged by the registration.” Bishop v. Flournoy, 319 Fed. Appx. 897 (Fed. Cir. 2009)
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`(standing “not a rigorous requirement”); 37 C.F.R. § 2.101(b).
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`1 The case on which Applicant relies for this point of law in Paragraph 12 of its Motion, Ritchie v. Simpson, 170 F.3d
`1092 (Fed. Cir. 1999) actually found standing to oppose. However, the Section 2(a) immoral and scandalous grounds,
`which were the main grounds on which the opposition was brought, are no longer viable grounds for opposition. Iancu
`v. Brunetti, __U.S. __, 139 S.Ct. 2294 (2019).
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`AKA properly pleads on page 1 of the Opposition that it believes it will be damaged by
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`registration of Applicant’s purported mark. Furthermore, in cases like this, where the mark is being
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`challenged on failure-to-function grounds in violation of Sections 1, 2, 3 and 45 of the Lanham
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`Act, it is irrelevant whether the opposer owns a trademark application or registration. 15 U.S.C.
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`§§ 1051, 1052, 1052 and 1127. Opposer has a real interest in this proceeding. It would suffer harm
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`because, if granted, the Class 25 registration for STROLL TO THE POLLS would enable
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`Applicant to prevent Opposer (and others) from affixing the slogan to apparel.
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`The fact that Opposer and Applicant are competitors in the field of voter mobilization is an
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`additional, but not necessary, ground for standing. See e.g., Eastman Kodak Co. v. Bell & Howell
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`Document Mgmt. Prods. Co., 23 USPQ2d 1878, 1879 (TTAB 1992), aff’d, 994 F.2d 1569 (Fed.
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`Cir. 1993)(manufacture of same or related products establishes standing to oppose on
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`descriptiveness grounds); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL
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`6522400 at *5 (TTAB 2019)(standing established by the fact the parties compete in the same field
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`of commerce).
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`Applicant admits the parties are competitors. In Paragraph 46 of its Motion, Applicant
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`refers to a “prior communication between Charity’s signatory [Applicant’s founder, Ramona
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`Prioleau] and Opposer.” AKA believes that the “prior communication” is an October 19, 2020
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`email from Ms. Prioleau, whereby she essentially tries to license the STROLL TO THE POLLS
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`slogan to AKA by offering AKA the opportunity to “partner” with her organization. Exhibit 1
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`(October 19, 2020 email from Ms. Prioleau). In the communication, Applicant’s founder states she
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`is “concerned” about AKA’s use of STROLL TO THE POLLS – a phrase AKA used long before
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`Applicant was formed. Significantly, Ms. Prioleau states that her organization and AKA are
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`competitors in the field of voter engagement:
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`We checked our records and your client, Alpha Kappa Alpha Sorority, Inc., has not
`partnered with us and we are concerned about your client's use of the STTP Mark
`for voter registration, mobilization and participation activities.
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`Exhibit 1. Given that Applicant admits that it and AKA are competitors, AKA unequivocally has
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`standing to oppose. See e.g., Eastman Kodak, 23 USPQ2d at 1879 (“[P]laintiff may establish its
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`standing by pleading and then proving that it is engaged in the manufacture or sale of the same or
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`related products”).
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`Once Opposer has shown standing to oppose on one ground, it has standing to oppose on
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`other grounds. Jewelers Vigilance, 823 F.2d at 493 (“Once standing is established, the opposer is
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`entitled to rely on any of the grounds set forth in section 2 of the Lanham Act which negate
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`applicant’s right to its subject registration.”); Azeka Building Corp. v. Bryan Kenji Azeka, 2017
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`WL 2391862 at *3 (2017); see also TBMP § 309.03(b).
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`To suggest that AKA does not have a real interest in this case and “is no more than an
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`intermeddler” is misguided, at best, and disingenuous, at worse. Opposer believes it would be
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`damaged because if Applicant were to secure a trademark registration, Opposer AKA would not
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`have the right to seek a trademark registration or potentially affix the slogan STROLL TO THE
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`POLLS on apparel. Accordingly, AKA has standing to oppose.
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`II. AKA HAS PROPERLY PLEADED EVERY CLAIM
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`A. AKA Has Properly Pleaded Its Section 2(d) Claim.
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`“A real interest in a proceeding and reasonable belief of damage may be found, for
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`example, where plaintiff pleads (and later proves)… [a] claim of likelihood of confusion that is
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`not wholly without merit, including claims based upon…prior use of a confusingly similar mark.”
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`TBMP § 309.03(b). To oppose registration under Section 2(d) of the Act, Opposer must allege that
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`Applicant’s mark “so resembles a mark registered…or…previously used by another and not
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`abandoned” so as “to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d)
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`(emphasis added).
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`In Paragraphs 3, 4, and 11 of the Opposition, AKA pleaded prior use of STROLL TO THE
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`POLLS as a service mark for voter engagement and registration services and alleged use prior to
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`Applicant’s alleged dates of first use.2 Common law rights are sufficient to support a Section 2(d)
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`claim. See Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283,
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`1285 (TTAB 2008) (standing established and opposition sustained on summary judgment, based
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`on prior use evidenced through declaration an executive of opposer); Kohler Co. v. Baldwin
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`Hardware Corp., 82 USPQ2d 1100, 1106 (TTAB 2007) (prior use of a mark to establish standing;
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`petition for cancellation granted).
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`The case on which Applicant so heavily relies, Jewelers Vigilance, 823 F.2d 490, actually
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`supports AKA’s, not Applicant’s, position. The Board held that a nonprofit jewelry trade
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`association had standing to oppose an application for DEBEERS on Section 2(d) and other
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`grounds. The opposer had a real interest in the outcome on behalf of its members, because a third
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`party not related to DeBeers Consolidated Mines Limited was attempting to secure a trademark
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`registration for DEBEERS. Id. at 493-94. Similarly, in this case, the nonprofit AKA Sorority has
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`standing to oppose registration of STROLL TO THE POLLS so that it (and its members) may use
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`the term, a term that AKA has been using long prior to Applicant. However, unlike in Jewelers
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`Vigilance, and as alleged in the Opposition, Opposer AKA actually uses STROLL TO THE
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`POLLS itself, and thus has prior rights on which to base the Opposition.
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`Applicant’s reliance on Holmes Products Corp. v. Duracraft Corp., 30 U.S.P.Q.2d 1459,
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`1994 WL 179774 (TTAB 1994) also is misplaced. First, Holmes involved the applicant’s motion
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`2 Contrary to what Applicant asserts in Paragraphs 14 and 28 of its Motion, AKA is not basing this opposition on any
`claimed rights in STROLL TO THE POLLS for “dancing.”
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`for partial summary judgment on the opposer’s Section 2(d) claim – a procedural posture separate
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`and distinct from a motion to dismiss. Second, the Board noted, “the real issue” in Holmes was
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`“not standing, but the sufficiency of the pleaded claim of likelihood of confusion.” Id. at 3.
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`While the Board in Holmes ultimately held that the opposer did not establish a legitimate
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`interest in opposing on Section 2(d) grounds because it failed to claim priority or plead that it used
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`the marks, that is not the case here. Id. at 4. AKA clearly pleaded that it owns and used prior to
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`Applicant common law rights in STROLL TO THE POLLS in connection with voter engagement-
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`related services.3 (Opposition ¶¶ 3, 11.)
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`A key factor in determining whether there is a likelihood of confusion between two marks
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`for the purposes of registration is whether the goods and/or services are related. In re E. I. Du Pont
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`de Nemours & Co., 476 F.2d 1357, 1361(CCPA 1973)(13-point test for determining registrability
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`under Section 2(d)). If the goods and services “can be related in the mind of the consuming public
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`as to the origin of the goods”, there is more of a chance for likelihood of confusion. Recot, Inc. v.
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`Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000); Dallas Cowboys Cheerleaders, Inc. v. Pussycat
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`Cinema, Ltd., 604 F.2d 200, 205 (2d Cir. 1979) ("The public's belief that the mark's owner
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`sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.")
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`Vacating the dismissal of an opposition in Recot, the Federal Circuit found that the Board,
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`inter alia, failed to consider relevant evidence that consumers could believe that dog treats and
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`3 Applicant’s reliance on footnote 15 in Slesinger, Inc. v. Disney Enterprises, Inc., 2011 WL 2489755 (TTAB 2011)
`aff’d,702 F.3d. 840 (Fed. Cir. 2012) also is gravely misplaced. The core issue in Slesinger was not standing. The Board
`held, and the Federal Circuit Court affirmed, that the opposer/petitioner SSI did not have grounds to oppose/petition
`to cancel on likelihood of confusion and lack of ownership grounds because a federal district court previously held
`that SSI had previously transferred by contract all of its rights in the WINNIE THE POOH marks to Disney. Thus,
`SSI’s claims were barred by the doctrine collateral estoppel. Id. at 6, 8. Footnote 15 of Slesinger merely states that
`because the district court held that SSI had transferred its ownership rights in the subject marks to Disney, it lacked
`standing to challenge Disney’s rights in the marks. In this case, AKA has not transferred its rights in STOLL TO THE
`POLLS to Applicant, pursuant to a contract or otherwise. Moreover, this case does not involve the issue of collateral
`estoppel based on the opposer’s transfer of marks to applicant. Slesinger, therefore, is inapposite.
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`human snacks could emanate from the same origin or source. Recot, 214 F.3d at 1330. The marks
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`in Recot were FIDO LAY and FRITO-LAY. Id. at 1325. The marks in this case are identical, and
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`the respective goods and services are highly related. (Opposition ¶¶ 12-13.)
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`As pleaded in Paragraphs 9, 12 and 13 of the Opposition and demonstrated in Exhibits E
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`and F of the Opposition and Exhibits A and B to the Motion, Applicant uses the Class 25 apparel
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`products to promote the voter engagement and registration services that are the subject of
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`Applicant’s Application No. 90248099 for STROLL TO THE POLLS in Classes 35, 36 and 42
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`(the “Service Mark Application”). As pleaded in Paragraphs 9 and 13 of the Opposition, because
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`the goods and services are highly related, Applicant’s mark, in violation of Section 2(d) of the Act,
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`is likely to cause confusion or mistake or to deceive as to the source of Applicant’s goods in that
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`the public is likely to mistakenly believe that Applicant’s goods are somehow related to, affiliated
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`with, connected to, sponsored or endorsed by AKA.4
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`Because AKA has alleged that the parties’ marks are identical and are used on highly
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`related goods and services, and that AKA has priority of use, AKA has properly pleaded Section
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`2(d) as a ground for opposition. Applicant’s Motion therefore should be denied.
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`B. AKA Has Properly Pleaded its Failure-to-Function Claim.
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`AKA also pleaded, in the alternative, that STROLL TO THE POLLS does not function as
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`a trademark because it is: (1) a phrase used by the public to mobilize voters and (2) merely
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`ornamental. (Opposition ¶¶ 3-5, 14-15 and corresponding exhibits.) The slogan therefore is not
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`registrable under Sections 1, 2 and 45 of the Act. 15 U.S.C. §§ 1051, 1052, 1127.
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`4 Applicant’s reliance on the “principles of anti-dissection” in Paragraph 35 of its Motion to challenge the Section 2(d)
`grounds not only is misplaced, but also is legally incorrect. The “anti-dissection” doctrine refers to the trademarks
`themselves (which are identical in this case), not the goods or services offered under them. See Estate of P.D. Beckwith,
`Inc., v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920) (“commercial impression of a trade-mark is derived
`from it as a whole, not from its elements separated and considered in detail”).
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`Registration should be refused where slogans are used on apparel as ornamentation or to
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`convey informational messages because purchasers will not perceive the wording as a source-
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`identifier for the goods or services. Trademark Manual of Examining Procedure (“TMEP”) §§
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`1202.03, 1202.03(f)(i) (refusal of ornamental slogans on apparel), 1202.04 (“[m]erely
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`informational matter fails to function as a mark to indicate source and thus is not registrable”), and
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`1202.17(c) (“[t]he USPTO will not register a mark unless it functions as a mark”).
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`Curiously, each and every case Applicant cites to support its claim that the STROLL TO
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`THE POLLS slogan functions as a trademark actually stands for the proposition that it does not.
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`See Motion ¶ 47; In re Wal-Mart Stores, Inc., 2019 WL 193990 (TTAB 2019) (INVESTING IN
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`AMERICAN JOBS refused registration on failure-to-function grounds); In re Volvo Cars of North
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`America Inc., 46 U.S.P.Q.2d 1455 (TTAB 1998) (DRIVE SAFELY safety admonition refused
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`registration on failure-to-function grounds).5
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`To overcome the failure-to-function grounds, Applicant argues that the claim is frivolous;
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`Applicant’s specimen demonstrates trademark usage, and the examiner did not raise failure-to-
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`function grounds in the examination of the application. (Motion ¶¶ 50, 54-55). All of these
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`arguments miss the mark.
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`Addressing the specimen argument first, while Applicant did submit a hangtag as a
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`specimen of use (Motion ¶¶ 50, 53), even hangtags can demonstrate ornamental, as opposed to
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`trademark, use of a phrase. See, e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716
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`(TTAB 2016)(refusing to register “I ♥ DC” on apparel and other items on ornamental grounds
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`5 Applicant also relies on In America Online, Inc. v. AT & T Corp., 243 F.3d 812 (4th Cir. 2001). In that case, the
`Fourth Circuit held that that the unregistrable tagline YOU HAVE MAIL is a functional and generic phrase that is not
`capable of being enforced as a trademark. Opposer has not pleaded functionality or genericness in the Opposition. The
`case, nonetheless, illustrates other reasons that taglines can fail to function as trademarks.
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`because "as an expression of enthusiasm, it does not create the commercial impression of a source
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`indicator, even when displayed on a hangtag or label") (emphasis added).
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`In In re Bose Corp., 546 F.2d 893 (CCPA 1976), a case where a mark was not registrable
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`because the specimens failed to show proper trademark usage, the court correctly noted:
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`The Trademark Act is not an act to register mere words, but rather to register
`trademarks. Before there can be registration, there must be a trademark, and unless
`words have been so used they cannot qualify.
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`Id. at 896. See also In re Hulting, 107 USPQ2d 1175, 1181 (TTAB 2013) (refusing registration of
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`NO MORE RINOS! on apparel and other items as ornamentation and informational matter that
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`conveys a political slogan devoid of source-identifying significance); In re Pro-Line Corp., 28
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`USPQ2d 1141 (TTAB 1993) (refusing registration of BLACKER THE COLLEGE SWEETER
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`THE KNOWLEDGE as an ornamental slogan that conveys a message not likely to be perceived
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`as source-indicator).
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`Applicant’s selective submission of a hangtag as a specimen does not erase from the record
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`the overwhelming evidence of Applicant’s ornamental use of STROLL TO THE POLLS. The
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`“SHOP” section of Applicant’s website at www.strolltothepolls.org (that Applicant put into the
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`record in its application) is replete with Class 25 merchandise emblazoned with the STROLL TO
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`THE POLLS message that people should vote. Exhibits A and B to Applicant’s Motion and
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`Exhibits E and F to the Opposition, all of which are excerpts from Applicant’s website, further
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`Applicant’s ornamental use of STROLL TO THE POLLS on its Class 25 products.
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`Below is an example of Applicant’s merchandise on sale at www.strolltothepolls.org that
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`illustrates ornamental and informational use of STROLL TO THE POLLS:
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`Moreover, all of the cases on which Applicant relies in Paragraphs 52-53 of its Motion
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`stand for the proposition that – just like Applicant’s use of STROLL TO THE POLLS – prominent,
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`ornamental display of a slogan does not function as a source-identifier and therefore should be
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`refused registration on failure-to-function grounds. E.g., In re Pro-Line Corp., 28 USPQ2d 1141
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`(BLACKER THE COLLEGE SWEETER THE KNOWLEDGE for clothing refused registration
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`on merely ornamental/failure-to-function grounds); In re Dimitri’s Inc., 9 U.S.P.Q.2d 1666 (TTAB
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`1988)(SUMO for apparel refused registration on merely ornamental/failure-to-function grounds);
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`In re Astro-Gods Inc., 223 U.S.P.Q. 621 (TTAB 1984)(ASTRO GODS and design for apparel
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`refused registration on merely ornamental/failure-to-function grounds); In re Tilcon Warren Inc.,
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`221 U.S.P.Q. 86 (TTAB 1984)(WATCH THAT CHILD for construction material refused
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`registration on failure-to-function grounds). The other cases on which Applicant relies in
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`Paragraphs 52 and 53 of the Motion are irrelevant, as they do not involve Rule 12(b) motions to
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`dismiss a notice of opposition.6
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`6 International Order of Job’s Daughters v. Lindeburg and Co., 633 F.2d 912 (7th Cir. 1980) is a trademark
`infringement case. The Seventh Circuit held that the defendant was using the JOB’S DAUGHTERS name and emblem
`as functional aesthetic components of a product and not as trademarks. Accordingly, no infringement was found.
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`In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982) is also irrelevant. In that case, the Board held that
`MORK & MINDY on t-shirts functioned as a secondary source for the television show of the same name. At this stage
`in the proceeding, the Board must only decide whether Opposer’s failure-to-function claim was properly pleaded, not
`whether Applicant can overcome the claim with a secondary source defense.
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`Applicant also attempts to defeat a properly pleaded failure-to-function claim by arguing
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`that AKA failed to consider whether third party uses of STROLL TO THE POLLS were authorized
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`by Applicant. (Motion ¶ 4). Applicant misses the point. If STROLL TO THE POLLS fails to
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`function as a trademark, then no one needs Applicant’s permission to use the phrase.
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`Applicant further argues that the failure-to-function ground is improperly pleaded because
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`the claim is “frivolous, insufficiently pleaded, and is not a typical ground asserted in an
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`opposition.” (Motion ¶ 50.) Applicant asserts that because the examiner did not refuse registration
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`of the subject application or Service Mark Application on ornamental (failure-to-function)
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`grounds, the claim is not properly pleaded. (Motion ¶¶ 50, 54.) Applicant posits that if the examiner
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`were to issue such a refusal, Applicant could overcome it with a substitute specimen. (Motion ¶
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`54). Applicant’s assertions are wrong as a matter of fact, law, and public policy.
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`First, the TTAB opposition filing coversheet in the ESTTA system plainly lists “Failure to
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`Function under Sections 1, 2 and 45 of the Act” grounds for opposing registration of a mark. (See
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`Opposition Coversheet.) Second, by granting third parties the right to oppose registrations,
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`Congress provided a preliminary “backstop to purely ex parte examination of trademark
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`applications” and a second backstop through cancellation actions. J.T. McCarthy, McCarthy on
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`Trademarks and Unfair Competition, § 20:2 (5th ed. 2021) “The opposition procedure is intended
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`to remedy oversight or error, not to substitute for the examination process.” In re Shell Oil Co.,
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`992 F.2d 1204 (Fed. Cir. 1993), reh’g denied, (opposition sustained); see also, In re Viterra Inc.,
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`671 F.3d 1358, 1365 (Fed. Cir. 2012)(affirming Board’s decision to sustain opposition, “inter
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`partes proceedings are intended to be a backstop for the examination process”).
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`Third, the examiner indeed refused registration of Applicant’s Service Mark Application
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`on failure-to-function grounds. See Exhibit 2 (April 12, 2021 office action). To support the refusal
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`to register, the examiner provided evidence of how the public would perceive the STROLL TO
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`THE POLLS slogan as “an informational message” that is “not registrable.” The examiner
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`explained:
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`Registration is refused because the applied-for mark is a slogan that does not
`function as a service mark to indicate the source of applicant’s services and to
`identify and distinguish them from others. Trademark Act Sections 1, 2, 3, and 45,
`15 U.S.C. §§1051-1053, 1127. In this case, the applied-for mark is an informational
`social, political, or similar kind of message that merely conveys support of,
`admiration for, or affiliation with the ideals conveyed by the message.
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`Exhibit 2