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Your source for news, updates and guidance on all things trademarks and intellectual property.

Introduction to Failure to Function Refusals

Alt Legal Team | May 26, 2021
7 min read

One of the core tenets of trademark law is that trademarks must serve as a source indicator, distinguishing the goods and services from those of other sources. When a trademark does not act as a source indicator, it consequently fails to function as a trademark and will be refused registration.

As IP attorney and former USPTO trademark examiner John Miranda pointed out, the USPTO has recently been taking a zealous approach to failure to function refusals. Examiners now frequently reject applications containing widely used messages and other matter types that can, and perhaps should, be viewed as distinctive and arbitrary and thus registrable. Therefore, it is more important than ever to pay attention to the reasons why a mark may fail to function so that you can anticipate potential refusals and prepare to overcome a refusal.

There are a variety of reasons why a mark will fail to function. This article will provide a brief description of the reasons why an examiner may cite failure to function as a reason for refusal to register a mark. Additionally, we have written in-depth articles about two of the most common and complex reasons for failure to function: merely ornamental matter and merely informational matter. Review these guides to gain a better understanding of these types of refusals and the evidence that you will need to demonstrate in order to overcome the refusal.

The following is a list of refusal types that fall under the failure to function category:

1. Trade Name

Trade name or commercial name refers to the name a person gives to identify a type of business, company, or vocation. There are instances where a mark may function both as a trade name and trademark or service mark, but the applicant must demonstrate that the mark does more than merely identify the business entity and helps to distinguish the applicant’s goods and services from others’. For example, if an individual registered the business name William’s Professional Plumbing, LLC with his state, this business name would likely not be registrable as a trademark unless it specifically distinguishes the service from others. By contrast, The Coca-Cola Corp. sells its Coca-Cola beverage and was able to obtain the trademark for Coca-Cola beverage, while the product and business share the same name.

2. Trade Dress

Trade dress is the “total image and overall appearance” of a product and includes the design of a product (product size, shape, color, color combinations, textures, graphics, or configuration), the product packaging, and the color of the product or packaging. In determining whether trade dress is registrable, the examiner will consider functionality and distinctiveness. Trade dress is functional and unregistrable if it is essential to the use or purpose of the item or if it affects the cost or quality of the item.  For example, a standard shampoo bottle would not be registrable, but a shampoo bottle in the shape of a rose might be. Trade dress is not inherently distinctive, but the applicant may overcome this refusal by demonstrating acquired distinctiveness pursuant to §2(f).

3. Ornamentation

Ornamentation refers to a decorative feature that may include words, designs, slogans, or trade dress. Ornamental matter ranges on a spectrum from incidentally ornamental matter that is inherently distinctive or has acquired distinctiveness and is therefore registrable, to matter that is purely ornamental and unregistrable. Read more about ornamental refusals.

4. Informational matter

Informational matter contains three categories: (1) matter that conveys general information about the goods or services; (2) matter that is a common phrase or message used in the relevant industry; (3) matter that is a direct quote, passage, or citation from religious text conveying support for the ideals conveyed by the text. Read more about informational matter refusals.

5. Color

Color marks consist solely of one or more colors used on particular objects on the entire surface or a portion of the goods, or on all or part of the packaging of the goods. Color marks are never inherently distinctive and cannot register to the Principal Register without a showing of acquired distinctiveness pursuant to §2(f). Color is typically perceived as an ornamental feature of the goods or services and the applicant must overcome this presumption by showing that consumers use the particular color to identify and distinguish the goods or services and determine their source. Here are some notable color marks.

6. Incidental item

Incidental items include items that an applicant uses in conducting its business such as letterhead, invoices, reports, boxes, and business forms. These items are not sold or transported in commerce, and rather, are necessary to the means by which business is conducted or transmitted.

7. Marks that identify a column or section of a printed publication

Columns, sections, supplements, and removable/separable “pullout” sections of a printed publication are not considered separate goods unless they are sold, syndicated, or offered for syndication apart from the larger publication in which they appear.

8. Title of a single creative work

The title, or a portion of a title, of a single creative work is unregistrable, unless the title has been used on a series of creative works. Single creative works cannot serve as trademarks because these works are protected by copyrights, which have a limited term and allow a work to fall into the public domain. A trademark can be renewed in perpetuity so long as it is being used. Copyright law trumps trademark law in this situation because once the work falls into public domain, others have the right to use the work, including the title.

9. Name and pseudonyms of an artist or author

A mark consisting of the name of an author of written works or the name of a performing artist for sound recordings, when used solely to identify the author or artist is unregistrable. The name of an author or performer may be registered if used on a series if the applicant demonstrates that the name identifies the source of the series, not merely the author or performing artist. For example, Ate My Heart Inc., a company associated with performer Lady Gaga (the stage name of Stefani Germanotta), owns a trademark registration for LADY GAGA for use in connection with a series of sound recordings, among other goods and services. The specimen of record depicts several Lady Gaga albums for sale online and was accepted as a proper showing of a series of sound recordings where Lady Gaga is the source.

10. Name or design of a character in a creative work

Names or character designs that merely identify a character in a creative work, whether used in a series or a single work, are unregistrable. It is possible to register these types of marks if the applicant can demonstrate the character name does not merely identify the character in the work. For example, the applicant can show that the character name is used in a way that would be perceived as a mark on the spine of a book or on displays associated with the book. An example of a successful registration is HARRY POTTER owned by Warner Bros. Entertainment, Inc. for use in connection with books, other printed materials, and other products. Harry Potter is of course the title character of the series and the applicant was able to demonstrate that the character name is perceived as a mark.

11. Background design or shape

Common geometric shapes and background designs that are not sufficiently distinctive are unregistrable. If an applicant is able to demonstrate that a common shape or design has acquired distinctiveness pursuant to §2(f), then the mark may be registered.

12. Name of a cultivar or plant varietal

Cultivar names and plant varietals are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which the variety is known to consumers. Even if a cultivar name or plant varietal is arbitrary, it identifies the variety of a particular plant, not the particular source. The reason why these names are unregistrable is because it is against public policy for any one supplier to retain exclusivity over a patented plant variety once the patent expires. For example, GRANNY SMITH cannot be registered as a trademark when referring to a type of apple.

13. Scent, fragrance, or flavor

Scents and fragrances are unregistrable when they serve a utilitarian purpose and are functional, like the scent of perfume or air freshener. However, if scent or fragrance is used in a nonfunctional manner, it may be registered on the Principal Register if the applicant is able to demonstrate acquired distinctiveness pursuant to §2(f). Here are a few registered scent marks.

Similarly, flavors are unregistrable because they are generally seen as characteristic of the goods. However, flavors can function as source indicators if an applicant is able to demonstrate a substantial showing of acquired distinctiveness pursuant to §2(f).

14. Hologram

Holograms are unregistrable unless the applicant is able to demonstrate that consumers would perceive it as a trademark. Holograms are commonly used for non-trademark purposes such as anti-counterfeiting devices and therefore, consumers are less likely to perceive holograms as source indicators.

15. Commonplace sound

Whereas arbitrary, unique, and distinctive sound mark
s can identify a product or service and be registered, commonplace sounds must initially be refused registration. Commonplace sounds marks refer to goods that make the sound in their normal course of operation such as alarm clocks, phones, and other appliances with audible alarms. Commonplace sound marks should be refused registration unless the applicant is able to demonstrate acquired distinctiveness pursuant to §2(f).

16. Model or grade designation

Model designations appear in connection with a wide variety of products to identify a specific style, type, or design of a product within a particular line of goods. They are commonly used to distinguish automobile parts within a single product line and often provide users with product compatibility information. Grade designations describe a product that has a certain level of quality within a defined range, or a particular classification, size, weight, type, degree, or mode of manufacturing. Model and grade designations are generally unregistrable because their primary function is to provide information about the product to a consumer. Where a model or grade designation serves to distinguish the applicant’s goods from those of others or identifies the applicant as the source, the mark may be registered.

17. Universal symbol

Universal symbols are designs, icons, or images that are commonly used in an informational manner and convey a widely recognized meaning. Examples include symbols for recycling, biohazards, radiation, and a circle with a diagonal line indicating “no” or “prohibited.” Universal symbols are generally unregistrable because they are informational or ornamental.

18. Hashtag

Hashtags consist of a word or phrase along with the # symbol and are often used on social-networking sites to search for a keyword or topic of interest. The symbol and word “hashtag” are generally not considered to serve a source-identifying function because they merely facilitate online searching. However, a hashtag mark may be registrable if it functions as a source indicator for the applicant’s goods or services. Learn more about trademark protection surrounding hashtags by viewing Alt Legal Webinar: #IP #TRADEMARKS: New Media, Hashtags, Trademarks & Brand Protection.

19. Repeating pattern

Repeating patterns are composed of a single repeated element or a repeated combination of designs, numbers, letters, or other characters forming a pattern displayed on the surface of goods, product packaging, or materials associated with advertising or provision of services. Repeating patterns are generally considered to be ornamental and nondistinctive and therefore do not function as source indicators and are unregistrable absent a showing of acquired distinctiveness pursuant to §2(f). However, a repeating pattern that is unique when used in connection with the relevant goods or services may be inherently distinctive.

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