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.

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:

  1. Protect consumers from confusion as to the source of goods or services;
  2. 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 messages, slogans, phrases and/or statements 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, religious in nature. A call to action or a business statement might get rejected for failing to function as a trademark. The common thread between all these examples is the inability to indicate the source of goods or services. Such marks may be perceived by consumers as statements made in support of a cause, for example, as opposed to source indicators.

So when a trademark examining attorney believes that an applied-for mark fails to function as a trademark, the resulting failure to function refusal is essentially stating that the applied-for mark does not tell consumers about where the goods or services come from. In overcoming such a refusal, the challenge is to show that such a mark is capable of indicating source.

What are examples of failure to function trademark refusals?

Below are some examples of trademark applications being rejected on the basis of a failure to function as a trademark (grouped by similar concepts):

What are examples of successful reversals of failure to function refusals?

Here are some applied-for marks that overcame the failure to function refusal:

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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