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From Intellectual Property Law Daily, January 17, 2019

Wal-Mart slogan ‘Investing in American Jobs’ misses the mark

By Laura Lefkow, J.D.

The informational statement—used on "shelf-talker" signage near products that were made by American workers—did not indicate the source of the goods and therefore was not federally registrable.

Use of the phrase "Investing in American Jobs" by Wal-Mart Stores, Inc. merely communicated support for American-made goods to consumers and failed to function as a mark, the Trademark Trial and Appeal Board has held in an opinion designated as precedential. The Board affirmed a USPTO examining attorney’s refusal of the phrase’s registration on the Principal Register, because it is an informational statement commonly used in business or industry and not an indicator of source (In re Wal-Mart Stores, Inc., January 11, 2019, Kuczma, L.).

Wal-Mart filed an application in 2014 to register "Investing in American Jobs" as a mark for "promoting public awareness for goods made or assembled by American workers; Retail store services featuring a wide variety of consumer goods." Finding the mark was merely informational and commonly used as a slogan to promote businesses engaging in activities to boost the U.S. economy, the examining attorney refused registration under Sections 1-3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053. Wal-Mart appealed the examining attorney’s denial of reconsideration.

Section 2 of the Act connoted that a trademark must indicate the source of the services or goods and distinguish them from others to be eligible for registration. The court analyzed the commercial impression the phrase makes on the relevant public to determine whether consumers would perceive the subject matter sought to be registered.

Wal-Mart used the phrase on shelf-talker signage in retail stores positioned close to goods it designated as made by American workers, and on its website to promote awareness of goods made or assembled by U.S. workers. Wal-Mart pointed out that it had spent over $10 million in connection with is asserted mark since 2014, and had 300,000 visits to its webpage about "Investing in American Jobs." The Board noted that mere appearance on specimens of record did not establish the phrase’s use as a service mark, and web traffic alone did not constitute evidence that the public perceived a term as a source-identifier.

Other businesses had used similar slogans that conveyed support for American-made goods, were informational in nature, and used words that conveyed their ordinary meanings, such as "Proudly Made in USA." Many third parties in several industries commonly used the phrase "Investing in American Jobs" to convey the same general ideas as Wal-Mart, exposing the public to the ordinary meaning of the phrase in everyday life from many different sources. It was common knowledge that businesses were anxious to encourage purchasers to give preference to American-made products.

Even a showing that consumers associated a phrase with particular provider did not allow the provider to remove the term from the common lexicon. When others besides the applicant used a phrase in an information manner, the burden was on the applicant increases to show its right to exclusive use. Here, consumers would not perceive "Investing in American Jobs" as a service mark for promoting public awareness of American-made goods or Wal-Mart’s various retail store services as recited in the application.

Finally, Wal-Mart argued that the USPTO "overwhelmingly" allowed registration of marks that began with the words "Investing in." The Board was unpersuaded, because all but two of the marks Wal-Mart cited were from cancelled registrations, and abandoned or pending applications. The history of applications not before the Board did not constitute probative evidence of how consumers perceive the phrase Investing in American Jobs. The Board remained firm that as used by Wal-Mart, the public would not perceive "Investing in American Jobs" as a merchandising shortcut that indicated the source of Wal-Mart’s goods and distinguished them from those of others.

This case is Serial No. 86261962.

Attorneys: Gary J. Rinkerman (Drinker Biddle & Reath LLP) for Wal-Mart Stores, Inc. Barbara Brown for USPTO.

Companies: Wal-Mart Stores, Inc.

MainStory: TopStory Trademark USPTO

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