In the first office action issued against the Application Mark, the examiner objected to its application and found that it was devoid of any distinctive character. The examiner stated that the Application Mark serves as a promotional statement, suggesting that the services claimed are associated with the book/movie "The Great Gatsby." Therefore, the examiner concluded that it is unlikely that the mark will be perceived as a badge of origin if consumers are not being educated that it is one. To overcome the distinctiveness objection, the Applicant was invited to file evidence of use.
In this case, since the Applicant did not adduce sufficient evidence showing that the Application Mark had acquired distinctiveness through use, the critical issue was whether there was inherent distinctiveness, which requires considering the average consumer's perspective who is deemed to be reasonably well informed.
The IP Adjudicator proceeded on the basis that the relevant public has knowledge of The Great Gatsby, the character of Jay Gatsby and the association with 1920s-themed parties. The IP Adjudicator concluded that the Application Mark is not inherently distinctive for four reasons.
Firstly, as a preliminary point, it is more difficult to establish the necessary distinctiveness for slogans.
Secondly, the Applicant's argument that the Application Mark would be perceived as imaginative, surprising or unexpected cannot be accepted. Instead, the Application Mark is likely to be understood as purely promotional puff or a mere call to action.
Thirdly, the fact that the Application Mark will trigger a cognitive process in the mind of an average consumer is not sufficient to find that the mark is inherently distinctive. The IP Adjudicator held that the critical question is whether the average consumer is able to perceive the Application Mark to be a badge of origin, and not whether the mark triggers any cognitive process. In this case, it is unlikely that the Application Mark will be perceived as a badge of origin.
Lastly, the Applicant's attempt to amend the specification of services claimed in order to overcome the distinctiveness objection did not succeed given the interlinked nature of the services. Both the Applicant's original and proposed amended services were generally related to entertaining or hosting/planning parties/events. The IP Adjudicator held that even if the specification amendment was granted, it would have minimal impact on the scope of the Applicant's rights due to the similar nature of services claimed. As such, the Applicant's proposed amended services were not sufficient to separate the relevant services such that the distinctiveness objection could be waived.
The IP Adjudicator's decision highlights the higher threshold that slogans need to cross before being accepted for registration under the Act. It is more difficult to establish distinctiveness given slogans are usually "laudatory about some aspect or quality of the goods or services in question." However, slogans are still capable of functioning as a badge of origin if they are not descriptive and if they possess a certain originality.
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