Common US Marines slogan remains in the public domain

United States of America
In In re Eagle Crest Inc (Serial No 77114518, September 3 2010), the Trademark Trial and Appeal Board (TTAB) has affirmed the examining attorney’s refusal to register the mark ONCE A MARINE, ALWAYS A MARINE on the grounds that the mark was informational and did not function as a trademark. 
 
Eagle Crest Inc applied for the registration of the trademark ONCE A MARINE, ALWAYS A MARINE in connection with clothing. The examining attorney refused the application, citing Sections 1, 2, and 45 of the Trademark Act, contending that the mark is “merely informational because the goods as worn tell the public that the wearer is either a current or a former United States marine”. Affirming the examining attorney’s refusal, the TTAB held that Eagle Crest could not attempt to appropriate a well-known and already highly used slogan.
 
The examining attorney had established a prima facie case that the mark was informational by submitting evidence in the form of Google search results showing “nearly three million hits” for the slogan 'Once a Marine, always a Marine'. Eagle Crest itself admitted that the mark was “a motto associated with, and used by and about Marines by them and their admirers.” As a foundational point of trademark law, the TTAB reiterated that slogans or statements that would ordinarily be used in business, or in a particular trade or industry, are not registrable. Thus, the TTAB held that the phrase 'Once a Marine, always a Marine' “is an old and familiar Marine expression” which Eagle Crest could not trademark by removing the expression from common parlance for its own purposes.
 
In addition, the examining attorney had submitted evidence of other websites selling clothing, bumper stickers, caps, posters and calendars with the phrase 'Once a Marine, always a Marine'. The TTAB noted that, “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights in common phrases or slogans”. Given the variety of sources also selling goods featuring the slogan, the TTAB held that consumers could not view the slogan as a trademark indicating Eagle Crest as the only source of the clothing. Further, while Eagle Crest used the ™ symbol in connection with the slogan, the TTAB rightfully noted that the ™ notation does not make an otherwise unregistrable term registerable.
 
Eagle Crest argued that the slogan was not a phrase of “universal applicability and usage” like 'drive safely'. However, this argument had no merit since it was not supported by any evidence rebutting the examining attorney’s prima facie case against the slogan 'Once a Marine, always a Marine'. In addition, Eagle Crest argued that its searching revealed “hundreds of marks which include the term ‘marine’” and listed several select registrations. Again, the TTAB considered these to be of little probative value, since Eagle Crest had failed to properly make the registrations of record by failing to submit copies of these registrations, and by failing to even point out the goods in those registrations. In any event, the TTAB noted that it was not bound by the actions of examining attorneys in allowing prior marks for registration.
 
Finally, the TTAB did recognise that ONCE A MARINE, ALWAYS A MARINE, as applied to clothing, was “intrinsically different” from slogans that impart information about the goods themselves (such as the case cited by the examining attorney of THE BEST BEER IN AMERICA as applied to beer). However, dashing Eagle Crest’s one last argument, the TTAB considered ONCE A MARINE, ALWAYS A MARINE informational because it conveyed information in expressing support or affiliation with the Marines. Accordingly, the refusal of the registration of the mark was maintained.
 
Susan M Natland and Cindy N Nguyen, Knobbe Martens Olson & Bear LLP, Irvine

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