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Welcome Back to TM Incapability and Merely Informational USPTO Refusals

By Steve Baird® on September 8, 2020
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Welcome back to another edition of Merely Informational and Incapable Marks.

The above neighborhood Applebee’s is on my usual route to going anywhere from our home, so I’m predicting I’ve passed by well more than 10,000 times.

The temporary “Dining Room Open” signage is a recent addition from a few months ago, when Minnesota restaurants began to re-open their dining rooms.

Over the years, I’ve focused on the more permanent Welcome Back! above-door signage, wondering if Applebee’s ever has attempted to seek federal registration.

Seemed like a great blog topic, for some day, given my distaste for the USPTO’s insatiable appetite for fusing informational refusals with trademark incapability.

Since consumer perception controls trademark capability, favoring a review of the facts and circumstances (instead of incapability rules) makes more sense to me.

Nonetheless, I’ve assumed that the USPTO would reject Welcome Back! for registration, considering it merely informational and incapable as a trademark.

So, today’s the day, not because Applebee’s has sought trademark protection, but because of its Welcome Back commercial that ran much of this past summer.

The commercial focuses on the prominent Welcome Back! signage seared with John Sebastian’s Welcome Back tune, made famous by Welcome Back, Kotter.

Seeing how Applebee’s creatively linked its longstanding Welcome Back! signage and other brand messaging to a nostalgic and feel-good tune from the mid-70s, I thought, just maybe, Welcome Back! finally was added to its menu of marks.

After all, in another context, a creative fusion of branding elements led to Owens-Corning overcoming “well-settled” law against color trademarks, when O-C linked its pink-insulation advertising campaign to the beloved Pink Panther cartoon.

Although Applebee’s has not (yet) sought registration, Welcome Back apparently is on the intent-to-use trademark wish-list of a wholesale seafood distributor, for “take-out restaurant services,” and a few weeks ago registration was refused:

“Registration is refused because the applied-for mark is a slogan or term that does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others . . . . In this case, the applied-for 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 . . . . Terms and expressions that merely convey an informational message are not registrable. . . . An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). . . . Nor will submitting a substitute specimen overcome this refusal.”

As predicted, the USPTO found Welcome Back to be merely informational and incapable of performing a trademark function for take-out restaurant services.

While overcoming the incapability refusal may appear an insurmountable climb for the seafood distributor, what if Applebee’s filed and faced a similar refusal?

Would Applebee’s be able to establish favorable evidence of consumer perception of Welcome Back! as a signal of its brand? If so, would the USPTO respect it?

Photo of Steve Baird® Steve Baird®

View my professional biography

Just so you know, I’m all about brands and the law, both professionally and personally. I regularly annoy family and friends in retail stores by focusing on product labels—not to buy the product, but to read the fine print…

View my professional biography

Just so you know, I’m all about brands and the law, both professionally and personally. I regularly annoy family and friends in retail stores by focusing on product labels—not to buy the product, but to read the fine print and ask, “Who owns these brands” and “Did they really register those marks?” To understand the depth of my passion for brands and helping clients achieve their business goals, legally, you must understand that my interest in business and branding goes back to the late 1960s. The very first brand I recall profiting from was Jiffy®. Even before being old enough to deliver papers for the Iowa City Press Citizen, between episodes of Bewitched®, I would bake cupcakes and walk my finished product door-to-door, sampling along the way, of course, throughout our Kimball Road neighborhood, mostly selling them to husbands whose wives didn’t bake enough (probably watching Bewitched®), according to them at least. One hundred percent profit margins are easy when you can use the necessary equipment and raw materials directly from Mom’s kitchen. Mass producing “hot pads” (pot holders, not real estate) and selling them door-to-door was another favorite childhood business venture at the ripe age of six. Graduating to lawn-mowing age worked well with my paper routes because I could easily see who needed help cutting their grass and, in some cases, avoiding neighborhood ridicule. Yes, you’re right, Dad loaned me his Lawn-Boy® mower on weekends, rent-free, and even bought the gasoline (Dad was not brand loyal at all with gasoline, so I have no brand memory there). Another pure profit opportunity. Let’s just say that Mom and Dad were generous, unsecured investors in my development and future. Thanks Mom and Dad, I now understand the meaning of overhead and capital improvements! I bucked a lot of family tradition and jokes to become a lawyer and a trademark guru. There is not one lawyer in the family tree, as far as my sister knows (and she would know). Nearly everyone is, or was, a teacher of some kind. That must be where my passion for educating others about the legal implications of branding comes from. Basically, I have been speaking about the legal implications of branding since the early 90s, after permitting my pharmacist’s license to expire (after being a victim of an armed robbery where Dilaudid® was on the top of the gunman’s list of desired controlled substances), and shortly after working for an 86 year old federal judge whose chambers had a nice view of the White House in Washington, D.C. While I’d like to say that the movie My Cousin Vinny inspired me to become a lawyer, it was released two years after I graduated from law school. So, really, I guess it just inspired me to be a better lawyer and leader. For now, you can call me a “thought-leader” in the trademark world, and the thankful leader of a very talented group of creative and insightful lawyers and staff who are dedicated to putting our intellectual property clients in the best possible position to achieve their business goals. When I’m not in the office, “cracking the whip,” making sure others in the group keep their bios on this blog short and sweet, working (which isn’t to say I’m not still thinking about my clients’ businesses), or soaking it up in the hot-tub with my soul-mate, I am a dedicated family man – a.k.a. the chauffeur. Until they reach the driving age, I’ll continue to shuttle my four wonderful kids around to their athletic and other events, at which you can find me cheering in the stands.

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  • Posted in:
    Intellectual Property
  • Blog:
    DuetsBlog
  • Organization:
    Winthrop & Weinstine, P.A.
  • Article: View Original Source

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