`
`
`
`
`
`This Opinion is Not a
`Precedent of the TTAB
`
`Mailed: November 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Donald E. Moriarty
`_____
`
`Serial No. 86367823
`_____
`
`Jed H. Hansen of Thorpe North & Western LLP,
` for Donald E. Moriarty.
`
`Natalie L. Kenealy, Trademark Examining Attorney, Law Office 104,
`Zachary Cromer, Managing Attorney.
`_____
`
`
`Before Shaw, Larkin and Hudis,
`Administrative Trademark Judges.
`
`
`
`Opinion by Shaw, Administrative Trademark Judge:
`
`Donald E. Moriarty (“Applicant”) seeks registration of the mark WORST MOVIE
`
`EVER! (in standard characters) on the Principal Register for goods identified as
`
`“parody of motion picture films and films for television comprising comedies and
`
`dramas featuring a mashup of different motion picture films,” in International Class
`
`9.1
`
`
`1 Application Serial No. 86367823 was filed on August 15, 2014 under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b), claiming a bona fide intention to use the mark in
`commerce. As discussed below, following publication of the application for opposition,
`
`

`

`Serial No. 86367823
`
`Following an Examiner’s Amendment to amend the identification of goods, t he
`
`application was published for potential opposition on April 21, 2015. No opposition
`
`having been filed, a Notice of Allowance for the Application was issued on June 16,
`
`2015. After five extensions of time, Applicant filed its Statement of Use including one
`
`specimen of use on June 18, 2018.
`
`Upon examination of the Statement of Use, the Trademark Examining Attorney
`
`refused registration of Applicant’s mark on the ground that the applied-for mark is a
`
`slogan or phrase that does not function as a trademark to indicate the source of
`
`applicant’s goods and to identify and distinguish them from the goods of others under
`
`Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1151, 1052, 1053 and 1127. 2
`
`When the refusal was made final, Applicant appealed and requested
`
`reconsideration. When the request for reconsideration w as denied, the appeal
`
`resumed. The appeal is fully briefed. We affirm the refusal to register.3
`
`
`Applicant filed a statement of use on June 18, 2018 supported by a specimen of use and
`claiming a date of first use of the mark anywhere and in commerce of June 7, 2018.
`
`2 The Examining Attorney’s reliance on Section 3 of the Trademark Act, 15 U.S.C. § 1053, is
`unnecessary inasmuch as Applicant is seeking registration of a trademark, not a service
`mark. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1202.04 (Oct. 2018)
`(“[T]he statutory basis for [a failure to function] refusal is §§ 1, 2, and 45 of the Trademark
`Act, 15 U.S.C §§ 1051, 1052, and 1127, for trademarks, and §§ 1, 2, 3, and 45, 15 U.S.C.
`§§ 1051, 1052, 1053, and 1127, for service marks.”).
`
`3 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
`the docket and electronic file databases for the involved application. All citations to the TSDR
`database are to the downloadable .PDF version of the documents.
`
`- 2 -
`
`

`

`Serial No. 86367823
`
`I. Preliminary matters
`
`The Examining Attorney objects to new evidence submitted by Applicant with his
`
`appeal brief, namely, an image of Applicant’s DVD inside its packaging.4 The
`
`objection is well taken. The evidentiary record in an application should be complete
`
`prior to the filing of an ex parte appeal to the Board . Trademark Rule 2.142(d), 37
`
`C.F.R. § 2.142(d). Because the material was not filed prior to the appeal, it will be
`
`given no further consideration.
`
`Applicant objects to the entire “Statement of Facts” sectio n of the Examining
`
`Attorney’s Brief “because it does not cite to the record and mischaracterizes the
`
`procedural history.”5 Applicant argues that “TBMP § 1203.01 specifically states that
`
`both the Applicant and Examining Attorney should cite to the prosecution history
`
`when referring to the record.”6 The Examining Attorney’s summary of the prosecution
`
`history is general in nature and provides all of the relevant dates and names of the
`
`documents—with no need for individual page numbers. Therefore, we find that the
`
`Examining Attorney’s “Statement of Facts” complies with Board procedures. See
`
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1203.01.
`
`Applicant further argues that “the Examining Attorney mischaracterizes the facts
`
`[by stating] ‘registration was refused under Trademark Act Sections 1, 2, 3, and 45
`
`because the applied-for mark is a slogan or phrase that does not function as a
`
`
`4 Examining Attorney’s Br., 9 TTABVUE 4; Applicant’s Appeal Br., p. 9, 7 TTABVUE 10.
`
`5 Applicant’s Reply Br., p. 1, 10 TTABVUE 2.
`
`6 Id.
`
`- 3 -
`
`

`

`Serial No. 86367823
`
`trademark to indicate the source of applicant’s goods and to identify and distinguish
`
`them from others.’”7 (Emphasis added by Applicant). Applicant objects to this
`
`characterization because the issue of whether the applied for mark “is the instant
`
`issue and is not an established fact. Applicant contends that its mark is registrable.”8
`
`TMEP § 705.01 states: “Refusals to register should be couched in the statutory
`
`language of the section of the Trademark Act that is the basis of the refusal, and the
`
`examining attorney must cite the appropriate section of the Act.” We find that the
`
`Examining Attorney’s characterization of the basis for the statutory refusal complies
`
`with TMEP § 705.01 and is not improper. Moreover, the Examining Attorney’s
`
`inclusion of the statutory basis for the refusal as part of the Statement of Facts does
`
`not foreclose Applicant’s arguments against the refusal. In other words, we do not
`
`accept as an established fact the Examining Attorney’s statement that “the applied-
`
`for mark is a slogan or phrase that does not function as a trademark” merely because
`
`it is made in the Statement of Facts. In considering the record, the Board is capable
`
`of weighing the relevance and strength or weakness of the objected-to Statement of
`
`Facts, and keeping in mind the Applicant’s objections in determining the probative
`
`value of any statements. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
`
`USPQ2d 1477, 1479 (TTAB 2017). Applicant’s objections are overruled.
`
`
`7 Id. at 2, 10 TTABVUE 3.
`
`8 Id.
`
`- 4 -
`
`

`

`Serial No. 86367823
`
`II. Failure to function as a mark
`
`“‘[A] proposed trademark is registrable only if it functions as an identifier of the
`
`source of the applicant’s goods or services.’” In re Yarnell Ice Cream, LLC, 2019
`
`USPQ2d 265039, *16 (TTAB 2019) (quoting In re DePorter, 129 USPQ2d 1298, 1299
`
`(TTAB 2019)). “‘The Trademark Act is not an act to register mere words, but rather
`
`to register trademarks. Before there can be registration, there must be a trademark,
`
`and unless words have been so used they cannot qualify.’” Id. (quoting DePorter, 129
`
`USPQ2d at 1299 (quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA
`
`1976)).
`
`Slogans, phrases, and other terms that are considered to be merely informational
`
`in nature, or that express support, admiration or affiliation, are generally not
`
`registrable. See In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (“ONCE
`
`A MARINE, ALWAYS A MARINE is an old and familiar Marine expression, and as
`
`such it is the type of expression that should remain free for all to use.”). See also In
`
`re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (affirming
`
`refusal to register “Drive Safely” for automobiles because it would be perceived as an
`
`everyday, commonplace safety admonition).
`
`“The critical inquiry in determining whether a designation functions as a mark is
`
`how the designation would be perceived by the relevant public.” Eagle Crest, 96
`
`USPQ2d at 1229. “To make this determination we look to the specimens and other
`
`evidence of record showing how the designation is actually used in the marketplace.”
`
`Id. “The more commonly a phrase is used, the less likely that the public will use it to
`
`- 5 -
`
`

`

`Serial No. 86367823
`
`identify only one source and the less likely that it will be recognized by purchasers as
`
`a trademark.” Id.
`
`With his Statement of Use, Applicant filed the single specimen shown below,
`
`comprising a DVD case featuring a cover for a movie entitled HERCULES
`
`RECYCLED 2.0. The applied-for mark appears on the left side of the image below,
`
`i.e., on the back of the DVD case, as part of the wording “WORST MOVIE EVER!
`
`presents a Cole and Sean Productiontm Steve Reeves in Hercules Recycled 2.0tm”.
`
`
`
`The Examining Attorney argues that the applied-for mark WORST MOVIE
`
`EVER! is merely a commonplace slogan used by a variety of sources and merely
`
`conveys an ordinary, familiar or well recognized concept or sentiment, that is, “[t]he
`
`applied-for mark conveys the ordinary and well recognized concept that the movie in
`
`- 6 -
`
`

`

`Serial No. 86367823
`
`question is the most wanting in quality, value or condition of all time.”9 In support of
`
`the refusal, the Examining Attorney submitted a number of news stories and articles
`
`about movies to establish that the phrase “WORST MOVIE EVER!” is commonly used
`
`by the authors to convey the idea that the movie being discussed is “the most wanting
`
`in quality, value or condition of all time.”10 The following examples are most relevant
`
`(all with emphasis added):
`
`1) A New York Post article stating “How James Franco made the ‘worst movie
`ever’ into something good” (Office Action of July 20, 2018, TSDR p. 2).
`
`2) A Screenrant web site article stating “Often called the worst movie ever to
`win Best Picture, Crash has been criticized for its message on race relations
`in the United States” (Office Action of July 19, 2019, TSDR p. 58).
`
`3) An article in The Guardian describing a “follow-up [movie] to the ‘worst
`movie ever’” and stating “[Actor] Sestero also starred in The Room, …
`described as ‘the worst movie ever’” (Office Action of July 19, 2019, TSDR
`pp. 59-61).
`
`4) An article on the web site of TheMarySue.com discussing whether Twilight
`was the “Worst Movie Ever?” (Office Action of July 19, 2019, TSDR p. 64).
`
`5) An article in The Sun newspaper web site stating that “Netflix’s new festive
`film Christmas Wedding Planner slammed as ‘worst movie ever’ by
`viewers” and “viewers of Netflix’s new festive special … have dubbed it the
`‘worst movie EVER’” (Office Action of July 19, 2019, TSDR p. 68).
`
`6) Reviews from the Rotten Tomatoes movie review web site stating: “Crowned
`as the ‘worst movie ever made’ back in the 1980 book The Golden Turkey
`Awards, [Plan 9 From Outer Space] is the movies’ most famous Z-grade
`clunker”; and the movie Manos: The Hand of Fate is “A serious contender for
`the “worst-worst movie ever made” (Office Action of July 20, 2018, TSDR
`pp. 10 and 19).
`
`
`9 Examining Attorney’s Br., 9 TTABVUE 5.
`
`10 Id.
`
`- 7 -
`
`

`

`Serial No. 86367823
`
`7) An article in The Guardian (US edition) entitled “Ishtar at 30: is it really the
`worst movie ever made?” (Office Action of July 20, 2018, TSDR p. 28).
`
`8) A Mental Floss article stating: “Libby Coleman over at Ozy found that
`Ballistic: Ecks vs. Sever (2002) may actually be the worst movie ever
`made”; “If you go by the Razzies, the worst movie ever is Adam Sandler’s
`cross-dressing ‘comedy’ Jack and Jill”; and “Empire’s 50 Worst Movies Ever
`list gave the dishonor to Joel Schumacher’s Batman and Robin[.]” (Office
`Action of July 20, 2018, TSDR pp. 37 and 39).
`
`9) A Vanity Fair article entitled “The worst movie ever made?” providing a
`review of the movie Chooch. (Office Action of July 20, 2018, TSDR pp. 41-42).
`
`10) A Geeks.media article entitled “Armageddon: The Best Worst Movie Ever
`Made” (Office Action of July 20, 2018, TSDR p. 44).
`
`11) An article on the web site Some Drunk Blogger stating “Downsizing is the
`Worst Movie Ever Made” (Office Action of July 20, 2018, TSDR p. 49).
`
`12) A Roosevelt Island Daily article stating “Why Gone with the Wind is the
`Worst Movie Ever Made” and “the worst movie ever” (Office Action of
`July 20, 2018, TSDR p. 52-53).
`
`13) An article in The Atlantic asking “is [Birdemic: Shock and Terror] the worst
`movie ever made?” (Office Action of July 20, 2018, TSDR p. 56).
`
`14) A Wikipedia article providing a list of “worst films ever made” (Office
`Action of July 19, 2019, TSDR p. 7).
`
`15) A Screenrant web site article discussing Every Batman Movie Ever, Ranked
`and stating “Batman & Robin is not just the prime candidate for the worst
`Batman movie ever made – it might just be the worst movie ever made,
`ever.” (Office Action of July 19, 2019, TSDR p. 46).
`
`The Examining Attorney argues that, in light of this evidence, the applied-for
`
`mark fails to function as a trademark:
`
`[C]onsumers of movies – the relevant public – would
`perceive the applied-for mark as a commonplace term or
`
`expression rather than as an indicator of the source of
`applicant’s goods. Consumers who are accustomed to
`seeing or using this phrase would not regard the applied-
`
`- 8 -
`
`

`

`Serial No. 86367823
`
`for mark as being capable of distinguishing the source of
`applicant’s goods from those of another.11
`
`The record before us establishes that the phrase WORST MOVIE EVER! is
`
`frequently used by newspapers, magazines, media sites, movie reviewers, and others
`
`to describe really bad movies, or as the Examining Attorney argues, movies that are
`
`“the most wanting in quality, value or condition of all time.” 12 Among movie-watchers
`
`and reviewers, much time and effort has been spent debating which movie deserves
`
`the characterization “worst movie ever.” Although there is no shortage of candidates,
`
`surprisingly, there is significant public interest in watching really bad movies. That
`
`is, some of these movies are so bad they have become popular because of their campy
`
`badness. The record includes a number of references to movies that have become
`
`popular despite being really bad. For example:
`
` The New York Post describes the movie The Disaster Artist as “a truly awful
`
`movie that has become a cult classic.”13
`
` The movie-review web site Rotten Tomatoes lists “24 MOVIES SO BAD
`
`THEY’RE UNMISSABLE.” Rotten Tomatoes further describes the movies
`
`as “HORRIBLE! UTTERLY HORRIBLE! AND YET, FASCINATING...”.14
`
` Wikipedia’s “List of films considered the worst” includes summaries of
`
`nearly one-hundred of the worst films ever made, chosen in part based on
`
`
`11 Id. at 7.
`
`12 Id. at 5.
`
`13 Office action of July 20, 2018, TSDR p. 2.
`
`14 Id. at 8.
`
`- 9 -
`
`

`

`Serial No. 86367823
`
`awards they received for being so bad. These awards include The Golden
`
`Turkey Awards, the Golden Raspberry Awards, and the Stinkers Bad Movie
`
`Awards.15 Summaries of the individual movies include descriptions such as
`
`a “disastrous flop turned cult classic”,16 “far too entertaining to be
`
`considered as the worst film ever made”,17 and “one of the 100 Most
`
`Enjoyably Bad Movies Ever Made”18
`
` A review of Birdemic: Shock and Terror states that the movie is “one of
`
`those so bad it’s good films” and “so dumbfounding that it ends up being
`
`compelling viewing[.]”19
`
`In addition, some of the really bad movies described in the record, like Applicant’s
`
`identified films, are parodies of other movie genres. For example, the Wikipedia
`
`listing includes reviews of Leonard Part 6, a parody of spy movies;20 Epic Movie, a
`
`parody of fantasy movies;21 Disaster Movie, a parody of disaster movies;22 and Meet
`
`the Spartans, a parody of historical fantasy movies.23 Thus, parodies such as
`
`
`15 Office Action of July 19, 2019, TSDR p. 7.
`
`16 Reefer Madness, id. at 10.
`
`17 Plan 9 from Outer Space, id. at 12.
`
`18 The Swarm, id. at 15.
`
`19 Theatlantic.com, Office Action of July 20, 2018, TSDR p. 56.
`
`20 Office Action of July 19, 2019, TSDR p. 19.
`
`21 Id. at 28.
`
`22 Id. at 29.
`
`23 Id.
`
`- 10 -
`
`

`

`Serial No. 86367823
`
`Applicant’s fall within the genre of movies that are so bad that they are good, i.e.,
`
`“cult classics.”
`
`The movie depicted in Applicant’s single specimen, shown above, appears to follow
`
`the well-worn path of movies that are so bad, they are good. Applicant’s DVD case—
`
`in addition to featuring the applied-for mark WORST MOVIE EVER!—identifies a
`
`movie entitled HERCULES RECYCLED 2.0 and includes enticements to prospective
`
`consumers of bad movies such as “Slow Death through Bad Cinema”, “CHEESY
`
`HERCULES MOVIES”, and “two teenagers a green screen & a laptop”. The cover of
`
`Applicant’s Hercules-based parody also includes images depicting dogs with multi-
`
`colored Mohawk haircuts and sunglasses, a character named “Gaylord The Wonder
`
`CockroachTM”, and, as is not uncommon in the genre, a scantily clad woman.
`
`The function of a trademark is to identify a single commercial source of goods or
`
`services. Applicant’s use of the phrase WORST MOVIE EVER! simply informs
`
`prospective consumers that Applicant’s movies are part of the cinematic genre of
`
`really bad movies. Because consumers are accustomed to seeing the phrase “worst
`
`movie ever!” used by newspapers, magazines, media sites, movie reviewers, and
`
`others to describe similar movies, these consumers would not view the applied-for
`
`mark as a trademark indicating that Applicant is the sole source of parodies of really
`
`bad motion picture and television films bearing the mark. Applicant is not entitled to
`
`appropriate the phrase to himself and thereby attempt to prevent competitors from
`
`using it to promote the sale or viewing of their own really bad movies. In re Melville
`
`Corp., 228 USPQ 970, 972 (TTAB 1986) (describing the phrase BRAND NAMES FOR
`
`- 11 -
`
`

`

`Serial No. 86367823
`
`LESS as “a highly descriptive and informative slogan [that] should remain available
`
`for other persons or firms to use to describe the nature of their competitive services”).
`
`“[A]s a matter of competitive policy, it should be close to impossible for one competitor
`
`to achieve exclusive rights” in common phrases. 1 MCCARTHY ON TRADEMARKS AND
`
`UNFAIR COMPETITION § 7:23 (5th ed. Sept. 2019).
`
`Applicant conceded that the examples of “worst movie ever” in the Examining
`
`Attorney’s evidence “did convey information about the films they referred to.”24
`
`Applicant nevertheless argues that “in addition to the words themselves and their
`
`commercial context, the position and styling of Applicant’s mark on the specimen of
`
`record . . . creates a unique commercial impression that is capable of source indication
`
`and is not merely informational”.25 We disagree.
`
`Applicant’s use of WORST MOVIE EVER! on the DVD case does not establish that
`
`the proposed mark would be perceived by the relevant public as a source indicator.
`
`Submission of an otherwise acceptable specimen, such as a label, bearing the
`
`proposed mark will not obviate the refusal; the mere fact that the matter appears on
`
`a technically good specimen does not mean that it would be perceived as a mark. See
`
`D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (finding
`
`that the phrase I ♥ DC “does not create the commercial impression of a source
`
`indicator, even when displayed on a hangtag or label”). Instead, based on the evidence
`
`of widespread use of the phrase by others to describe really bad movies, we find that
`
`
`24 Applicant’s Br., p. 8, 7 TTABVUE 9.
`
`25 Id. at 9, 7 TTABVUE 10.
`
`- 12 -
`
`

`

`Serial No. 86367823
`
`consumers are likely to perceive that WORST MOVIE EVER! simply informs them
`
`that the enclosed movie belongs to the genre of movies that must be watched because
`
`they are so bad.
`
`Applicant further argues that many of the Internet excerpts made of record by the
`
`Examining Attorney are irrelevant because they show the applied-for mark in the
`
`context of a sentence, but not as a slogan. “Applicant’s contention . . . is that the
`
`context of Applicant’s mark without usage in a sentence creates a different
`
`commercial impression that is not merely informational.”26 This argument is
`
`unpersuasive. As noted above, the phrase WORST MOVIE EVER! would be perceived
`
`simply as referring to the movie genre of movies that are so bad that they are good.
`
`Here, given the widespread use of the phrase, the primary purpose of WORST MOVIE
`
`EVER! is to convey information about the products being sold, nothing more.
`
`Applicant also argues that the Examining Attorney’s evidence falls short because
`
`it does not show “that film production companies use the term WORST MOVIE
`
`EVER! to convey information about their own films.”27 This argument is unpersuasive
`
`as well. It is not necessary that the evidence show use by competitors. Rather, it is
`
`sufficient if the evidence establishes that potential purchasers would perceive the
`
`phrase as merely an informational slogan devoid of trademark significance. See In re
`
`Manco Inc., 24 USPQ2d 1938 (TTAB 1992) (evidence of use by media and businesses
`
`
`26 Id. at 8-9.
`
`27 Id. at 11.
`
`- 13 -
`
`

`

`Serial No. 86367823
`
`in a variety of industries established that the slogan THINK GREEN for mailing and
`
`shipping items and weather-stripping does not function as a trademark).
`
`Simply put, Applicant’s intent that WORST MOVIE EVER! function as a
`
`trademark does not make it so. “Mere intent that a term function as a trademark is
`
`not enough in and of itself, any more than attachment of the trademark symbol would
`
`be, to make a term a trademark.” In re Remington Prods., Inc., 3 USPQ2d 1714, 1715
`
`(TTAB 1987); see also Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs.,
`
`Inc., 123 USPQ2d 1844, 1855 (TTAB 2017); In re Vertex Grp. LLC, 89 USPQ2d 1694,
`
`1701 (TTAB 2009) (“[M]ere intent that a word, name, symbol or device function as a
`
`trademark or service mark is not enough in and of itself.”); In re Morganroth, 208
`
`USPQ 284, 287 (TTAB 1980) (“Wishing does not make a trademark or service mark
`
`be.”). If, as here, the evidence shows that the public would not perceive the proposed
`
`mark as serving to indicate the source of the identified goods, it does not function as
`
`a mark and may not be registered regardless of the manner of use depicted on the
`
`specimen.
`
`Applicant argues that since other informational phrases have registered, such as
`
`“WORST-CASE SCENARIO” for use in connection with video games, books, and
`
`audiovisual programs, his mark should be entitled to registration as well. “While we
`
`recognize that ‘consistency is highly desirable,’ consistency in examination is not
`
`itself a substantive rule of trademark law, and a desire for consistency with the
`
`decisions of prior examining attorneys must yield to proper determinations under the
`
`Trademark Act and rules.” In re Am. Furniture Warehouse CO, 126 USPQ2d 1400,
`
`- 14 -
`
`

`

`Serial No. 86367823
`
`1407 (TTAB 2018) (quoting In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544
`
`(Fed. Cir. 2007)). We “must assess each mark on its own facts and record.” Id. The
`
`fact that the USPTO registered “WORST-CASE SCENARIO” on a different record for
`
`use in connection with different goods does not entitle Applicant to register WORST
`
`MOVIE EVER! for “parody of motion picture films and films for television comprising
`
`comedies and dramas featuring a mashup of different motion picture films”.
`
`Finally, in his Reply Brief, Applicant argues that the Examining Attorney’s
`
`refusal is foreclosed because it was not issued prior to publication of the mark:
`
`Applicant maintains that since the Examiner sent the
`Application to Publication and
`issued a Notice of
`Allowance, the Examiner also believed that the mark
`
`WORST MOVIE EVER! was capable of acting as a
`trademark. It is clear error that the Examiner should
`suddenly do an about face about the ability of the mark
`
`itself to function as a trademark once the Statement of Use
`was filed.28
`
`This argument is unavailing. USPTO practice does not require that a failure to
`
`function refusal issue during first examination of an application filed under
`
`Trademark Act Section 1(b):
`
`The issue of whether a designation functions as a mark
`usually is tied to the use of the mark, as evidenced by the
`specimen. Therefore, unless the drawing and description of
`the mark are dispositive of the failure to function without
`the need to consider a specimen, generally, no refusal on
`this basis will be issued in an intent-to-use application
`
`under § 1(b) of the Trademark Act, 15 U.S.C. § 1051(b),
`
`until the applicant has submitted a specimen(s) with an
`
`
`28 Applicant’s Reply Br., p. 2, 10 TTABVUE 3.
`
`- 15 -
`
`

`

`Serial No. 86367823
`
`allegation of use (i.e., either an amendment to allege use
`under 15 U.S.C. § 1051(c) or a statement of use under 15
`U.S.C. § 1051(d)).
`
`TMEP § 1202.
`
`Moreover, even if Applicant’s drawing and description of the mark were
`
`dispositive of the mark’s failure to function without the need to consider a specimen,
`
`there is no restriction in the Trademark Act or Trademark Rules of Practice as to the
`
`point in time prior to registration when the USPTO may issue a new requirement or
`
`new refusal. TMEP § 706.01; In re Driven Innovations, Inc., 115 USPQ2d 1261, 1264
`
`(TTAB 2015), overruled on other grounds, 674 Fed. Appx. 996, 2017 WL 33574 (Fed.
`
`Cir. 2017).29
`
`In summary, we find that WORST MOVIE EVER! would not be perceived as a
`
`trademark to identify and distinguish Applicant’s goods from the like goods of others.
`
`Decision: The refusal to register Applicant’s mark WORST MOVIE EVER! on the
`
`ground that it fails to function as a trademark under Sections 1, 2, and 45 of the
`
`Trademark Act is affirmed.
`
`
`29 Consistent with USPTO practice, in the first Office Action, the Examining Attorney advised
`Applicant that upon review of an allegation of use, a refusal may be issued finding that the
`applied-for mark fails to function as a mark under Trademark Act Sections 1, 2, 3 and 45
`because it is the title of a single work. (Office Action of December 2, 2014.) The Examining
`Attorney’s advisory regarding the title of a single work refusal does not preclude the issuance
`a refusal that the mark is merely informational. See TMEP § 1202:
`
`[I]n a § 1(b) application for which no specimen has been
`submitted, if the examining attorney anticipates that a refusal
`will be made on the ground that the matter presented for
`registration does not function as a mark, the potential refusal
`should be brought to the applicant’s attention in the first Office
`action. This is done strictly as a courtesy.
`
`- 16 -
`
`