So you receive a letter of refusal from the U.S. Examining Attorney for Failure to Function. “Registration is refused because the applied-for mark is a slogan that does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others.”
What on earth does that mean? And what can you do about it?
Remember, a trademark must identify the applicant’s goods and/or services and distinguish from those of others and also indicate the applicant as the source of the goods or services. The key question when evaluating the registrability of a mark is ‘how will the prospective mark be perceived by consumers?’
A mark could be rejected for failure to function because the specimens do not show the applied for mark functioning as a mark. This would include those marks that are used primarily in Social Media posts, domain names, hashtags which will not necessarily
be perceived by consumers as indicating the source of goods and/or services.
(Note from A. Roberts, see citation below, “… the relationship between use as a mark and distinctiveness is interdependent and inverse: the less distinctive a mark is, the greater indicators of trademark use are needed to ensure consumers will perceive it as a mark, and vice-versa. Use as a mark is thus particularly outcome-determinative when it comes to marks whose status falls on the border between inherently distinctive and merely descriptive.”)
A second reason for rejection on the basis of Failure to Function as a Mark is because the applied for mark is a common term used by many businesses. “In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment. The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”
To back up this assertion, the Examining Attorney will attach evidence from third-party entities to show that this expression is commonly used. The point being that “Because consumers are accustomed to seeing this expression commonly used in everyday speech by many different sources, they would not perceive it as a mark identifying the source of applicant’s services but rather as only conveying an informational message.”
Here is a helpful example from John Welch:
Because consumers are accustomed to seeing ASSEMBLED BY YOU used by many different manufacturers and retailers of ready-to- assemble furniture and cabinets, they would not view the phrase CABINETS ASSEMBLED BY YOU as a trademark indicating that Applicant is the sole source of cabinets bearing the mark. Applicant is not entitled to appropriate the phrase to itself and thereby attempt to prevent competitors from using it to promote the sale of their own products. (Applicant argued that its specimens of use clearly show the phrase used as a trademark, with the TM symbol appearing after the phrase. The Board was unimpressed. "Submission of an otherwise acceptable specimen, such as a label, bearing the proposed mark will not obviate the refusal; the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark.")
What can you do?
According to the USPTO Examining Attorney “An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). TMEP §1202.04(d); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. Nor will submitting a substitute specimen overcome this refusal. See TMEP §1202.04(d).
The only option appears to be: to attempt to prove that the mark is being used as a mark not just as a slogan on social media. In addition, to show that the mark has distinctiveness. In most cases the USPTO Examining Attorney attaches multiple evidences of the applied for mark being used by many manufacturers, retailers, businesses. Perhaps studying the way they are being used could supply a basis for submitting evidence and arguments in support of registration.
Sources: Alexandra Roberts, Trademark Failure to Function
TTAB Affirms Failure-to-Function Refusal of Graphic Tool Used by DJ’s For Harmonic Compatibility – John L. Welch – August 29, 2019, The TTABlog
TTAB Affirms Two More Failure to Function Refusals – John L. Welch – September 20, 2019, The TTABlog
TTAB Finds: Failure to Function As A Trademark And Merely Descriptive – Nikki Seisel – September 27, 2017 - New York Trademark Attorney Blog
Bitlaw: 1202.19(e) Failure-to-Function Refusal – Mark Not Inherently Distinctive
Bitlaw: 904.07(b) Whether the Specimen Shows the Applied-For Mark Functioning as a Mark