L’appello amministrativo del USPTO riforma e registra il marchio <BLACK BIRTHING BILL OF RIGHTS> per servizi offerti da una “non-profit entity promoting improvements in Black maternal and infant health care”.
Rigettata la domanda in primo grado amministrativo per carenza di distintività, viene invece accolta in secondo grado:
<<We agree with Applicant that the specimens show BLACK BIRTHING BILL OF RIGHTS is used in rendering the identified services, and identifies Applicant as the source of those services. See In re ICE Futures U.S. Inc., 85 USPQ2d 1664, 1669 (TTAB 2008) (noting that use in the “rendition” of services is an element of the “sale” of services under Section 45 of the Trademark Act). In particular, Applicant’s social media posts featuring the BLACK BIRTHING BILL OF RIGHTS promote Black maternal and infant health care and are directed to the public at large, including both expectant mothers and care givers.
Moreover, the fact that at least six other “Bill of Rights” marks have registered for
a variety of services—including one for “public advocacy to promote awareness of credit, debit and payment card processing practices”—suggests that there is nothing inherently unregistrable about these kinds of marks. >>
<< Here, Applicant is using the phrase BLACK BIRTHING BILL OF RIGHTS to identify its own activities promoting Black maternal and infant health care, as evidenced by the Instagram posts. That is, Applicant uses BLACK BIRTHING BILL
OF RIGHTS to speak directly to expectant Black women and health care providers
about Black maternal and infant health care rights. Applicant also is allowing others to use the phrase BLACK BIRTHING BILL OF RIGHTS as part of their campaigns to promote Black maternal and infant health care. The fact that Applicant allows others to use BLACK BIRTHING BILL OF RIGHTS does not diminish its rights in the mark for its promotional and advocacy services. Indeed, Applicant’s “posting guidelines” for third-party use of the BLACK BIRTHING BILL OF RIGHTS seeks to Serial No. 90581377 ensure that the proposed mark will be associated with Applicant’s efforts to promote Black maternal and infant health care >>
Tenuto però conto che il cuore del servizio è la promozione di alcuni diritti a favore di donne e bambini di colore, sembrerebbe difficile -se fosse da noi- evitare la scure di nullità rappresentata dall’art. 13.1.b del c.p.i.
La decisione è USPTO Trademark Trial and Appeal Board , In re National Association to Advance Black Birth 23 aogosto 2022, Serial No. 90581377.
(segnalazione e link da tweet della prof.ssa Alexandra J. Roberts)