What is a refusal based on a failure to function as a trademark?
A certain type of trademark rejection seems to be occurring more frequently: the refusal based on a failure to function as a trademark. While it might not be as common as likelihood of confusion or mere descriptiveness, this failure to function trademark refusal is gaining in usage by USPTO trademark examining attorneys. Since it is high on the radar of trademark examiners, potential trademark filers should consider the possibility of a failure to function rejection before applying.
Need to argue against a failure to function refusal? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623.
What is the source-indicator purpose of trademarks?
A brief primer on trademark law would be helpful in understanding this particular refusal. The purpose of trademark law is twofold:
- Protect consumers from confusion as to the source of goods or services;
- Protect businesses who establish goodwill and proprietary rights by being the first to use a trademark on a product or service (i.e., stop others who attempt to use a confusingly similar mark to sell similar goods or services).
To accomplish the above objectives, a mark must be capable of indicating the source of the goods or services sold by a business. So this begs the question: What kind of marks would be incapable of indicating source?
What marks are incapable of indicating source?
If an applied-for mark consists of a message or conveys informational matter, then there is a high likelihood that such a mark would be rejected on the grounds that it fails to function as a trademark. The message might be political, social, environmental, or religious in nature.
A call to action or a business statement might get rejected for failing to function as a trademark. Inspirational slogans would also have a high risk of refusal. As a further example, statements made in support of a cause might get rejected. The common thread between all these examples is the inability to indicate the source of goods or services.
What might happen when you file a trademark application for a mark with a high risk of a failure to function refusal?
So when a trademark examining attorney believes that an applied-for mark fails to function as a trademark, they will issue an Office Action containing a failure to function refusal. Essentially, the trademark examiner is stating that the applied-for mark does not tell consumers about where the goods or services come from.
You will have an opportunity to respond to a trademark Office Action by making arguments as to why your mark is capable of indicating source. See the examples below of successful arguments against a failure to function refusal.
What are examples of failure to function trademarks?
Below are some examples of trademark applications being rejected on the basis of a failure to function as a trademark (grouped by similar concepts):
- ALL NATURAL GOURMET CRABMEAT PASTEURIZED
- DEHYDRATION RELIEF FAST
- CABINETS ASSEMBLED BY YOU
- THE NEXT MOVE IS YOURS
- REMEMBER THIS NAME
- LEGAL LANDMINES
- INTELLIGENCE OF THINGS
- WORST MOVIE EVER!
- JOHN 15:11 PUBLICATIONS
- TEAM JESUS
- GOD BLESS THE USA
- SHE KNEW SHE COULD
- RIBBONS OF HOPE
- I LOVE YOU
- I LOVE YOU SO MUCH
- I (heart) PGH ART
- TEXAS LOVE
- BORN IN THE USA
- MAMA BEAR
- 40-0 (score)
- ZT-1800 (model number)
- (shapes on gaming machines)
- (graphic tool / circles used by DJ’s)
- INVENTORY IS EVIL
What are examples of successful reversals of failure to function refusals?
Here are some applied-for marks that overcame the failure to function refusal: