Failures to Function and Likelihood of Confusion: Takeaways from Two Recent Federal Circuit Trademark Decisions

The U.S. Court of Appeals for the Federal Circuit recently affirmed two Trademark Trial and Appeal Board (TTAB) decisions. In In re GO & Associates, LLC, 2022-1961 (Fed. Cir. Nov. 13, 2023), the Federal Circuit affirmed the TTAB’s refusal to register the mark EVERYBODY VS RACISM because it failed to function as a trademark. In Trek Bicycle Corp. v. Isaacs, 2022-1434 (Fed. Cir. Nov. 15, 2023), the Federal Circuit affirmed the TTAB’s dismissal of Trek’s opposition to the registration of the RANGER TREK mark, finding no likelihood of confusion with Trek’s registered marks, and that Trek’s bicycle fame did not extend to backpacks.

In re GO & Associates

In In re GO & Associates, GO sought to register the mark EVERYBODY VS RACISM for various goods and services, including (1) apparel, (2) bags, and  (2) services promoting racial reconciliation. The examining attorney refused registration under 15 U.S.C. §§ 1052 and 1053, finding that the mark failed to function as a source identifier and instead conveyed an informational message.

In order to qualify for federal trademark registration under the Lanham Act, a mark must be able to function as a source identifier.

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