What is an indicator of source?
Not all words can be trademarked. In order for a term to function as a mark and thus qualify for registration, a mark must serve as an indicator of the source of origin of the relevant goods or services. If certain words or phrases fail to distinguish the source of goods/services from those of another, then such wording would be incapable of trademark registration.
The key question analyzed by the USPTO is “. . . how the designation would be perceived by the relevant public.” This inquiry involves looking into the meaning of the word(s) and the context of use.
Incapable informational matter
Here are some examples of informational matter incapable of being trademarked.
Merely conveying information about goods/services
A refusal based on the mark merely conveying information about the goods or services is somewhat similar to a rejection based on mere descriptiveness except for one key distinction: merely descriptive rejections might be overcome with evidence of acquired distinctiveness. Since acquired distinctiveness is not an option for overcoming a refusal based on merely conveying information, such a refusal is almost like a rejection based on a generic mark.
- FRAGILE for labels and bumper stickers
- GUARANTEED STARTING for motor vehicle services
- HOURS OF ENERGY NOW for dietary supplements
Widely used messages
This refusal applies to commonly used phrases and expressions that may be social, political, religious, or simply commonplace. A popular motto may carry a high risk of refusal under this particular category.
- Occupy [Wall Street / DC / Congress / you name it]
- BOSTON STRONG
- DRIVE SAFELY
- THINK GREEN
- PROUDLY MADE IN USA
- ONCE A MARINE, ALWAYS A MARINE
- ONE NATION UNDER GOD
- NO MORE RINOS!
Direct religious quotes, passages, citations
Bible passages and other religious texts may be considered as incapable of indicating source. The wording must be direct quote in order to be rejected on this basis. If the mark is not a direct quote, it may be rejected on other grounds, such as a widely used message.
What is a failure-to-function-as-a-mark refusal?
A refusal on the grounds that a mark fails to function as a trademark means means that the examining attorney believes the applied-for mark fails to indicate the source of goods or services. Such a refusal may be applied to informational matter as detailed above as well to marks which appear ornamental or convey a thought or emotion.
How to respond to a failure-to-function refusal
If a trademark application is refused on grounds that the mark is incapable of indicating source, then an applicant will not be able to prevail over the rejection with evidence of acquired distinctiveness. The Supplemental Register would not be available for matter that fails to function as a mark.
Instead, a proper response should include evidence that the relevant consumers would recognize the mark as a source indicator (e.g., brand) that distinguishes the applicant’s goods from competitors.
If a mark contains other registrable wording, then the examining attorney may require a disclaimer of the incapable matter.
A cost-effective strategy for registering trademarks should anticipate these potential refusals early on. While USPTO refusals can be subjective and difficult to predict, it may make sense to pivot to a different mark before investing in a trademark application and developing a brand.
Even if you are successful in registering a commonly used term, it may be costly to maintain exclusivity as others seek to use the same mark in promoting their products. Monitoring and opposing third party applications for similar marks can be a very expensive and unending commitment.
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