IP Law News

Walmart Is Denied ‘Investing in American Jobs’ Trademark

Jan. 11, 2019, 11:11 PM

Walmart Inc.'s use of “Investing in American Jobs” doesn’t qualify for trademark protection because it didn’t distinguish a product from others based on origin, the Trademark Trial and Appeal Board ruled.

The board interpreted the “Investing in American Jobs” wording as merely informative, not unlike—and in many cases identical to—statements used by other companies to convey support for American-made goods.

The Jan. 11 precedential opinion shows that even frequent use of a word, phrase or design in association with goods or services doesn’t establish trademark rights. Walmart failed to show that its phrase functioned independently as an identifier of a product, the board said.

“As used by applicant, it would be perceived by customers as a merely informational phrase, not a ‘merchandising short-cut’ that indicates the source of applicant’s services and distinguishes them from those of others,” the board said.

Walmart filed to register “Investing in American Jobs” with the U.S. Patent and Trademark Office in 2014. Its application used store displays featuring that logo, which incorporates other Walmart design trademarks like its spark logo, as an example of the word mark’s use.

Walmart argued that web searches for the phrase pulled up Walmart references. But the board said they “demonstrate little more than the applicant’s size, marketing and promotional efforts, and the quality of the search engine optimization techniques.” And even those results often showed use within a declaratory sentence rather than as a trademark, the board said.

The board also dismissed evidence of Walmart’s promotional expenditures related to the phrase, attendance at Walmart events, and website traffic, finding they were irrelevant to trademark eligibility.

Even if Walmart had demonstrated consumer association with the phrase, it “does not allow the provider to remove the term from the common lexicon,” the board said. It noted that “You Have Mail” and “Why Pay More,” which consumers associated with companies but were used within their plain meaning, have been denied trademark protections.

Trademark Administrative Judge Linda A. Kuczma wrote the opinion, joined by judges Angela Lykos and David Mermelstein.

Drinker Biddle & Reath LLP represented Walmart.

This case is In re: Wal-Mart Stores Inc., TTAB, Serial No. 86261962, 1/11/19

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

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