A “failure to function” refusal of a Federal trademark registration application is an allegation by the US Patent and Trademark Office (USPTO) that the business name or logo does not function as a trademark or service mark.
That is, a failure to function refusal alleges that a name or symbol does not identify the person of business applying for trademark registration as a source of the goods or services with which the name or symbol is identified in the application.
Under what circumstances is a trademark refused for failure to function, and what can you do about it?
When Is a Trademark Failure to Function Refusal Issued?
A trademark registration will not be issued by the USPTO unless the mark indicates the source of the goods or services identified in the application—and distinguishes those goods or services from others’.
In other words, not every name, symbol, logo, or tag-line attached to product packaging or an advertisement constitutes a trademark (or service mark, collective mark, etc.).
Some symbols, for instance, will be considered “merely ornamental” by the USPTO. Others are so universally used that, while they may convey something, what is conveyed is not the identification of the source of the goods or products on offer.
Here, it is important to note the reason that this will cause a US trademark registration application to fail.
Why Marks Cannot Fail to Function as Trademarks
Unlike copyright or patent protection, the protection of trademark registration in the US serves a purpose other than to protect your intellectual property for your use and profit. Trademark registration exists on a macro-level in order that consumers in the US are offered a measure of protection from being duped into purchasing fraudulent or knock-off products.
The “®” registered trademark symbol used with a business name, product name, logo, or slogan or tag-line indicates to US consumers that they are being what they think they are being—and that they are buying it from the person or company they hope to buy it from.
When a shopper walks into a convenience store in Michigan or elsewhere and sees a can of Coca Cola in the refrigerator with the ® symbol beside that familiar, red-and-white (or silver) cursive script, that shopper can purchase it with full confidence that it was manufactured and canned and shipped from The Coca Cola Company in Atlanta, Georgia. That shopper can feel secure in the thought that the can was not filled by some weird guy in his garage in Southfield, Michigan.
That cursive Coca Cola script functions as a trademark. It identifies The Coca Cola Company as the source of that can of pop (“soda,” for those of you munching on Drake’s Ring Dings and Mallomars over in New York, etcetera).
That a mark acts as a source identifier in this fashion is one of the basic requirements in the US for trademark registration.
If you want to protect a design just because you created it and might want to print it on t-shirts or posters and not necessarily for use as a source-identifying business or product logo, copyright registration is the form of intellectual property protection you would need, not trademark registration.
What Marks Will Receive Failure to Function Refusals
A mark will be likely to receive a failure to function refusal from the USPTO Examiner assigned to the trademark registration application under the following circumstances.
First, your intention that your name or logo function as a source identifier will not be relevant to the Examiner’s inquiry. The USPTO Examiner will review your trademark registration application and your proposed mark “on its face” to determine whether a failure to function issue exists.
The Examiner will, instead of looking into your other marketing efforts, or your soul, as the case may be, consider the nature of your proposed mark’s use in the relevant marketplace and the impression created when it is used in connection with your particular goods or services.
The Specimen evidencing your use in commerce of the mark will be the focus of this inspection. Based on the Specimen that you provide, the Examiner will consider whether your mark would be perceived as a source identifier by the consuming public.
If the Examiner believes that it would not, for the reasons described below or other reasons, a failure to function refusal will be issued.
- The Mark Imparts Information about the Goods or Services
Just as a name or logo that merely describes the goods or services being sold cannot be registered as a trademark generally, a so-called “universal symbol” will incur a failure to function refusal if it merely imparts information about some quality of the goods or services in question.
For example, the word “fragile” and the biohazard symbol used on actually hazardous materials have been found to be simply informational.
If you sell an organic product, in further example, or something that has been “imported,” you should probably not expect to be able to register those terms or related symbols as US trademarks.
On the other hand, if you have a punk rock band named Biohazard (yes, there was one), that’s another story. The word “biohazard” is not conveying information about the band’s music (or merchandise, etc.—hopefully).
- The Mark Conveys an Informational Message
Further in the same direction, even if a proposed mark does not convey a specific informational message about its related goods or services, it can still receive a failure to function refusal if it conveys a generally informational message to others.
Common words, phrases, slogans, and other “universal symbols” used may fall into this trap.
The peace symbol, the rainbow flag symbol, a black-gloved fist, a crucifix, and other such “universally understood” symbols would potentially incur a failure to function refusal. They is because they convey universal informational messages.
Such symbols have, in terms of public perception, no specific nexus with your goods or services—whatever they are. (The peace symbol will always convey a general wish for world peace, no matter what product you stick it on.)
- The Mark Serves Only as Ornamentation
Any symbol that appears to be mere ornamentation—that is, decoration—will also incur a failure to function refusal.
This issue very commonly arises for any trademark lawyer in Michigan or elsewhere with regard to entrepreneurs launching t-shirt or apparel companies. This writer has received, for example, many inquiries from t-shirt printing or manufacturing enterprises in Detroit regarding the potential trademark registration of a design printed on the front of a t-shirt.
This use of a design or symbol will be refused as mere ornamentation. A design on the front of a t-shirt does not identify for trademark registration purposes the source of the shirt itself. That would be the name or logo on the hang-tag of the shirt—not the design on the front of it.
Your t-shirt may have an elaborate design featuring the Detroit skyline on the front of it, but, if the hang tag says “Hanes” or “Fruit of the Loom,” Hanes or Fruit of the Loom are identified to consumers as the source of the apparel product. Your design on the front just makes the shirt attractive.
That is mere ornamentation, and it will be refused. (Again, copyright protection would be the appropriate form of intellectual property protection for an original design of this sort.)
Responding to Failure to Function Refusals
Failure to function refusals are most commonly issued by the USPTO in response to the Specimens filed with “in-use” trademark registration applications. However, these refusals can issue in 1(b) “intent-to-use” trademark registration applications also, if the descriptions provided in the application indicate a failure to function.
Because the USPTO considers the relevant issue whether the proposed mark functions as a trademark at all, certain Office Action (refusal) responses usually available to applicants to resolve a rejection will not be available in failure to function situations.
In particular, applicants will not be able to resolve a refusal based on failure to function by amending to the Supplemental Register rather than the Principal Trademark Register.
Likewise, substituting the Specimen or amending from in-use to intent-to-use will likely be ineffective.
Defenses that marks have “acquired distinctiveness” are available only in response to descriptiveness refusals and not failure to function refusals, further.
In other words, the appropriate response to a failure to function refusal is a specific legal and fact-based argument drafted on your behalf by a skilled Michigan trademark attorney that your mark does not, in fact, fail to function.
This refusal must be met head-on, in short.
Responses to USPTO Office Action Refusals must be filed within a specific timeframe after issuance or your application will be abandoned.
Starting in December, 2022, the deadline for responding to USPTO Office Actions will tighten from 6 months to 3 months.
Trademark Failure to Function Refusals: The Bottom Line
The bottom line with regard to trademark failure to function refusals is that the best way to avoid such issues is, first, to brand your product or service as uniquely as possible, avoiding the use of “universal” symbols and other obvious pitfalls.
The next step in avoiding such a refusal is to retain an experienced Michigan trademark attorney to review your mark, your products and services, offer expert guidance regarding what is and what is not registrable, and, when you have settled on a name or logo that appears to be bulletproof, to conduct a thorough pre-filing clearance search prior to drafting and filing your trademark registration application.
If a failure to function refusal is received, regardless, you will then have a trademark lawyer on hand to draft and file the proper response that will, hopefully, resolve the refusal to obtain registration for your trademark.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting individuals, entrepreneurs, artists, musicians, start-ups, and enterprises of scale in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
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