On July 14, 2020, DTTM Operations LLC (“DTTM”), the entity that holds trademarks for President Donald Trump’s for-profit businesses, filed an application with the United States Patent and Trademark Office (“PTO”) seeking the exclusive right to use the term TELERALLY as a service mark for “organizing events in the fields of politics and political campaigning.” (A service mark is a word, phrase, symbol, and/or design that identifies the source of a service rather than goods.) A few days later, Trump's 2020 campaign held its first in a series of “tele-rallies” aimed at voters in swing states. More recently, on September 20, Trump held a “tele-rally” with Virginia voters, assuring prospective supporters that he would “put a very heavy play in Virginia” to ensure that Biden does not “take your guns away,” “shred the Constitution,” and “destroy the suburbs” with “low-income housing going all over the suburbs.” This and other Trump tele-rallies are available for streaming on demand from YouTube.
The fact that Trump’s application to register TELERALLY was filed by one of Trump’s private, for-profit business entities is curious, because Trump’s other political trademarks, including MAKE AMERICA GREAT AGAIN, are registered to his campaign. This could signal a couple of different things:
First, with proper maintenance, a federal service mark registration can exist in perpetuity. Trump’s hotel business may hope to exploit the term TELERALLY beyond the 2020 election, possibly in connection with a re-tooling of the campaign’s proprietary voter engagement app to support other Republican interests. The “Trump 2020” app, which has been noted for the “gold mine” of data that it extracts from users’ cell phones, was developed by Phunware, Inc. of Texas at a cost of more than $4 million to the Trump campaign, plus nearly $3 million in taxpayer-funded pandemic aid. The app enables supporters to receive news updates directly from the President, attend virtual events, make telemarketing calls on behalf of the campaign, and participate in a “gamified” loyalty system through which supporters accumulate and redeem reward points for exclusive merchandise, experiences, and even meetings with the President.
Second, a service mark is essentially a limited-purpose monopoly on the English language. On that basis, DTTM’s claim to service mark rights in TELERALLY would theoretically entitle that for-profit, Trump-owned entity to charge the President’s campaign a license fee for the privilege of using the term TELERALLY in connection with political events. Could this be a strategy to funnel political donations to the President’s private interests in an election cycle that, due to the COVID-19 pandemic, saw spending on Trump hotels and resorts by his campaign and other Republican interest groups drop to just under $5 million from a total of more than $13 million in the 2016 campaign cycle?
We may never know. In a July 28, 2020 complaint filed with the Federal Election Commission (“FEC”) by nonpartisan election watchdog Campaign Law Committee, the Trump campaign stands accused of forming and utilizing several for-profit media companies to maneuver around federal election laws that require political committees to disclose each campaign expenditure that exceeds $200. One such entity is known to pay salaries to Lara Trump and Kimberly Guilfoyle, the wife and girlfriend of Trump’s adult sons. Alarmingly, the FEC currently lacks a quorum to act on the watchdog’s complaint, and quorum is unlikely to be restored before the November election because Trump’s nominee for the vacant directorship is considered a controversial choice.
Regardless of DTTM’s intentions, the company is unlikely to prevail in its quest to register TELERALLY as a federal service mark. In order to secure registration, DTTM would need to establish that the term TELERALLY is “distinctive,” i.e., that it has brand significance, or more technically, that it identifies the source of goods or services as opposed to denoting a class or feature of those goods or services. Distinctiveness exists on a continuum as shown below, with "fanciful" marks at one end, "generic” terms at the other end, and “arbitrary,” “suggestive” and "descriptive" terms lying between these extremes.
Spectrum of Trademark Distinctiveness
|Fanciful or Coined Marks||Arbitrary Marks||Suggestive Marks||Descriptive Terms||Generic Terms|
|Definition||an invented word or device with no established meaning among relevant consumers||word or device has established meaning that bears no relation to the goods or services||word or device indirectly hints at a characteristic, feature, or function of the goods or services||word or device directly identifies a characteristic, feature, or function of the goods or services||word or device identifies the class or genus into which the goods or services fall|
|Examples||KODAK, XEROX||APPLE for computers and phones; SHELL for gasoline||NETFLIX for streaming services; AMAZON for a large online retail outlet (suggesting size and strength)||SPEEDY for quick-turn oil change services; AMERICAN AIRLINES for an airline operating in North America||telephone; rally; escalator; ice cream; teleprompter; aspirin|
|Level of Protection||broadest possible protection||broad protection within specific class of goods or services||moderate protection||protectible with proof of “secondary meaning,” i.e. acquired trademark significance||never protectible|
We think the PTO will determine that TELERALLY is either generic or too highly descriptive to warrant protection as a mark for “organizing events in the fields of politics and political campaigning.” In making this determination, the PTO will first break the term down to its linguistic components and consider the standard meaning of those components in the English language. Merriam-Webster’s dictionary defines the term “tele,” in its combining form, as “distant; at a distance; over a distance” and “rally” as “an act of gathering forces together to renew or attempt an effort; “mass meeting for the purpose of displaying or arousing support for a cause or person.” Because the claim of rights in Trump’s application would encompass a mass meeting, held at a distance, for the purpose of displaying or arousing support for a cause, the composite term TELERALLY lacks inherent trademark significance. See, e.g., Telemed Corp. v. Tel-Med, 588 F,2d 213 (7th Cir. 1978) (TELMED merely descriptive for medical services rendered by telephone).
DTTM may argue that TELERALLY is inherently distinctive and registerable because it is an invented, unitary term that does not appear in any dictionary. This argument is unlikely to prevail. In general, a unitary mark comprising two descriptive or generic elements becomes registerable only where the combination produces a unique, incongruous or otherwise nondescriptive meaning in relation to the goods and/or services for which protection is claimed. In this case, the component terms TELE and RALLY retain their descriptive or generic significance within the mark as a whole; there is nothing transformative about the combination. Accordingly, the composite mark is itself descriptive or generic rather than coined or suggestive. See decisions by the PTO Examination Division finding that TELEDOCTOR, TELEPHARMACY, TELECARDIOLOGY, TELEDIETS, TELEHEALTH, TELEINTERPRETERS were all without inherent distinctiveness.
Once TELERALLY has been found to lack inherent distinctiveness, the PTO will determine whether the term is generic or descriptive in relation to the services listed in the application. This distinction is significant because genericness is an absolute bar to trademark protection, whereas two pathways to registration would remain following a descriptiveness finding. First, DTTM would be invited to produce evidence that, as a result of the Trump campaign’s extensive use of TELERALLY in advertising and promotion, the voting public has come to perceive the term as a signifier for DTTM or its licensee, the Trump campaign. Second, DTTM would be given the alternative option of amending its application to the PTO’s Supplemental Register, a second-tier, limited-benefit trademark register for terms that are capable of distinguishing goods or services, but have not been found to actually serve that function.
Historically, the PTO would have placed TELERALLY on the descriptive side of the descriptiveness/genericness divide, after which it would probably have concluded that the mark is “so highly descriptive” of campaign events conducted by telephone that Trump cannot, as a factual matter, produce sufficient evidence of acquired trademark significance. However, despite inconsistent decisions in recent years, the PTO appears to be moving toward a rule that would result in a refusal to register TELERALLY on genericness grounds. Pursuant to this approach, any term that the relevant public understands to refer to either the genus of goods or services identified in the application or to “a key aspect or subcategory of that genus” is deemed generic rather than descriptive. See In re Twenty-Two Desserts, LLC, 2019 U.S.P.Q.2D (BNA) 292782 (upholding refusal to register MALAI on the Supplemental Register because “malai” is generic for the cream from which the applicant’s desserts are made, and therefore, is also generic for the entire genus of goods that is claimed in the application); In re Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358, (Fed. Cir. 2018) (any term that the relevant public understands to refer to the genus of goods, or a key aspect or subcategory of the genus, is generic; remanding case for examination of whether the term ZERO, when appended to a mark for beverages, refers to a key aspect of the genus, namely the absence of calories); In re Cordua Rests., Inc., 823 F.3d 594 (Fed. Cir. 2016) ("a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole;” CHURRASCOS, the generic term for a type of grilled meat, held generic for applicant’s restaurant services because it denoted a key aspect of those services). Based on this trend, it appears that DTTM may fail on genericness grounds in its attempt to register TELERALLY.
The attorneys at Lutzker & Lutzker have decades of experience helping clients to vet potential marks before time and money is invested in a high-risk prospect. If you are considering a new branding element and need assistance, please reach out.