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BILL OF RIGHTS Mark Not Merely Informational

Posted by James Juo | Sep 01, 2022 | 0 Comments

Slogans, phrases, and other terms that are considered to be merely informational in nature are generally not registrable. See In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine expression, and as such it is the type of expression that should remain free for all to use.”). See also In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (affirming refusal to register “Drive Safely” for automobiles because it would be perceived as an everyday, commonplace safety admonition).

“The critical inquiry in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public.” Eagle Crest, 96 USPQ2d at 1229. “To make this determination we look to the specimens and other evidence of record showing how the designation is actually used in the marketplace.” Id.


The BLACK BIRTHING BILL OF RIGHTS trademark application for “Promoting public awareness . . .” in Class 35 had been refused for being merely informational wording that would be used by third parties. In re National Association to Advance Black Birth, Ser. No. 90581377 (Aug. 23, 2022).

In particular, the Examining Attorney noted that “[t]he wording BLACK BIRTHING BILL OF RIGHTS, especially associated with the PDF download option would be viewed as informational wording identifying the set of rights promoted by the applicant's services, rights which, if the applicant's efforts are successful, would be promoted and adopted by other sources, such as government programs, hospitals, and other maternity providers” (hyperlink added).

TTAB Appeal

The Trademark Trial and Appeal Board (“TTAB”) reversed the refusal, noting “the specimens show BLACK BIRTHING BILL OF RIGHTS is used in rendering the identified services.” The TTAB also cited In re Advert. & Mktg. Dev. Inc., 821 F.2d 614, 2 USPQ2d 2010, 12015 (Fed. Cir. 1987) for the proposition that the fact that the applicant's mark was used by others to identify their goods or services did not prevent the applicant from using and registering the same mark for its services.

Applicant uses BLACK BIRTHING BILL OF RIGHTS to speak directly to expectant Black women and health care providers about Black maternal and infant health care rights. Applicant also is allowing others to use the phrase BLACK BIRTHING BILL OF RIGHTS as part of their campaigns to promote Black maternal and infant health care. The fact that Applicant allows others to use BLACK BIRTHING BILL OF RIGHTS does not diminish its rights in the mark for its promotional and advocacy services. Indeed, Applicant's “posting guidelines” for third-party use of the BLACK BIRTHING BILL OF RIGHTS seeks to ensure that the proposed mark will be associated with Applicant's efforts to promote Black maternal and infant health care.

The TTAB thus found that the specimens of record establish that BLACK BIRTHING BILL OF RIGHTS functions as a mark when used in connection with Applicant's identified promotional and advocacy services, and reversed the refusal to register the mark.

The attorneys at Thomas P. Howard, LLC are experienced in trademark matters nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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