Not all trademarks are created equal.
In a decision of a rarely invoked dictum of trademark law, the U.S. Trademark Trial and Appeal Board ruled that the phrase I BELIEVE THAT WE WILL WIN failed to function as a trademark and thus was not entitled to registration. The case, United States Soccer Federation, Inc. v. Aztec Shops, Ltd., provides a good example of how to take into account all components of an effective trademark opposition strategy.
In United States Soccer Federation, the applicant sought registration of the mark “I believe that we will win” for a wide-variety of sports and promotional apparel in International Class 25. The Opposer, U.S. Soccer Federation, opposed the trademark application on the grounds that it failed to function as a trademark under Sections 1, 2 and 45 of the Trademark Act.
Section 45 of the Trademark Act defines a trademark as “any word, name,symbol, or device, or any combination thereof– (1) used by a person. . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” Not every phrase used in connection with the promotion of goods or services necessarily is a trademark and it is incumbent to examine how the phrase is used. Slogans or other terms that are merely considered to be informational in nature or express support, admiration, or affiliation are generally not registrable. The more common a phrase, the less likely that public will perceive it to be emanating from a single source. Here, the Board focused on how the phrase “I believe that we will win” is viewed by the relevant general public when used in the marketplace. The evidence submitted by Opposer revealed that “I believe that we will win” has been chanted at sporting events for years predating the Opposer as well as other public events. The fact that the Applicant had sold thousands of dollars worth of promotional merchandise bearing the mark could not negate the fact that consumers viewed the mark as famous and ubiquitous in and of itself, separate and apart from Applicant’s attempts to appropriate it as a single-source identifier for Applicant’s goods. As a matter of competitive policy, the Board ruled that the Applicant did not have the right to appropriate the phrase so widely-used by numerous groups and individuals in an attempt to gain exclusive rights.
The ability of a phrase to function as a trademark is the first-step in determining whether the phrase is entitled to trademark protection.