In a presidential decision, the Trademark Trial and Appeal Board (“TTAB”) held that Black Card, LLC can register FOLLOW THE LEADER because the phrase operates as a source identifier and not as an unregistrable common phrase.
Black Card applied to register FOLLOW THE LEADER in connection with the promotion of a number of services, including credit and debit card services, providing award incentives for credit card use, travel and tourism services, beauty salon booking services, and personal concierge services.
The Examining Attorney (“Examiner”) refused registration under Trademark Act Sections 1, 2, 3, and 45 on the grounds that the mark, as applied to the services identified in all classes of the application, failed to function as a mark to indicate the source of Black Card’s services and distinguish them from others because the phrase “follow the leader” is a commonplace term, message, or expression, widely used by a variety of sources, which merely conveys an ordinary, familiar, or generally understood concept or sentiment. The Examiner also refused registration as to some of the services in the application on the ground that they were indefinite and must be clarified.
Black Card argued in response that the phrase “follow the leader” does not have a single generalized commonplace message, pointing to online evidence that the phrase “follow the leader” can be used in many different contexts. Black Card also submitted amendments to address the Examiner’s objections to the descriptions of the services as indefinite. The Examiner maintained his position and made the refusal to register FOLLOW THE LEADER final. The Examiner later denied Black Card’s request for reconsideration
On appeal, the Examiner argued that FOLLOW THE LEADER is commonly used to encourage customers to follow the leader in a particular field and conveys that the applicant is the leader in the services listed in the application and should be followed. As a result, consumers would not perceive FOLLOW THE LEADER as a mark that identified the source of Black Card’s services. The Examiner supported his position with internet evidence of dictionary entries, articles, blogs, company websites, consumer goods, etc. showing use of FOLLOW THE LEADER as a children’s game, as a business leadership principle, and a phrase used to describe guided travel tours, government and political leadership, personal decision making, artwork, and ornamental use on consumer items.
Black Card submitted evidence of 10 prior registrations for the mark FOLLOW THE LEADER (all but one are cancelled or were allowed to expire), 32 third-party allowed applications and registrations for other common English idioms (i.e., LET THE GOOD TIMES ROLL, IT’S A PIECE OF CAKE, BETTER LATE THAN NEVER, HANG IN THERE, GET YOUR ACT TOGETHER, and LET’S ROLL), and a list of English idioms, proverbs, and expressions that are part of everyday life. Based on this evidence, Black Card argued that (1) FOLLOW THE LEADER has no generalized information message, (2) the USPTO’s issuance of registrations for other FOLLOW THE LEADER marks confirm that Black Card’s mark can function as a trademark, (3) there is no blanket rule that commonly used phrases are not registrable, and (4) the failure-to-function refusal was premature because the FOLLOW THE LEADER application was filed on an intent-to-use basis.
After reviewing the parties’ arguments and evidence, the TTAB was not convinced that FOLLOW THE LEADER was incapable of functioning as a source identifier when used in connection with Black Card’s services. According to the TTAB, the evidence showed that FOLLOW THE LEADER can convey different meanings in different contexts and did not show that FOLLOW THE LEADER is used to convey a single, common sentiment or meaning across a variety of goods or services such that consumers will view the phrase as conveying the same sentiment or meaning regardless of the goods or services with which it is used. The TTAB proceeded to reverse the failure-to-function refusal.
Given that Black Card did not address the identification of services issues in its appeal, the TTAB upheld the registration refusal for the Class 41 services in the FOLLOW THE LEADER application. The full decision can be found here: file:///C:/Users/KS18570/Downloads/EXA_10.pdf.