Failure To Function Refusals In Trademark Law

The trademark application process in the United States involves various steps to ensure that a mark meets all the legal requirements for registration. You do not need to be a lawyer to know that one of the most common grounds for refusal is that the trademark is likely to cause confusion with another mark already registered before the United States Patent and Trademark Office. But there are plenty of other reasons that trademark registration could be refused. One of the more difficult refusals to overcome is what is called a “Failure To Function” refusal. It may sound obvious that in order to be a trademark, something must be able to function like a trademark. This means that it must be able to be seen as designating the source of the underlying goods/services.

Again, this might all sound pretty basic depending on how familiar you are with trademark law. But things get a little more nuanced when you consider how something can or cannot actually designate source. After all, you may know that your trademark refers to you. But the question is will the consuming public see it that way too?

Types of Refusals In Trademark Law

Merely Ornamental
Merely ornamental refusals are a type of failure to function refusals that is most often seen on clothing such as shirts or hats. A mark is merely ornamental if consumers are likely to see it as decoration rather than as a symbol of the underlying company behind the product. Graphic t-shirts in particular face this problem as applicants commonly want to enlarge their trademark and put it front and center on a shirt.

It makes sense why this is so often the first instinct for many. They probably took time (and money) developing the mark, be it a phrase or a design. Naturally, they are going to want to display it prominently on their goods. But there are also many t-shirts out there that feature images or text that truly have no meaning behind them. Some think they can overcome this issue by including the TM symbol at the end of their mark and are inevitably surprised when they are still refused registration.

Even if a trademark on a shirt clearly has a trademark symbol next to it, that does not necessarily mean that consumers are likely to see the owner of that trademark as the producer of the shirt. In the case of particularly famous trademarks (e.g., the Nike swoosh, or professional sports insignias) it is in fact more likely than not that the mark owner is not the one making the shirt; rather, the shirt maker has licensed the right to use that mark as a decorative feature.

Now this does not mean that anything featured prominently on the front of an article of clothing will absolutely be refused for failure to function. But it is essential to ensure that the front of the clothing is not the only place you put your mark on the clothing. For example, with shirts, the next tag on the inside of the shirt is a great place to put your mark. Additionally, consumers have come to view small symbols located near the top of the shirt to designate source. Examples of this include Ralph Lauren, Polo, or Under Armor.

These strategies are something we try to stress to all our clients if they have not yet begun using their mark. But unfortunately, some clients come to us after they have started production of their goods, something which can prove to be a costly mistake and one that might not be able to be overcome. This is why it is crucial to consult with an attorney at the infancy of your business.

Informative, Expressive, And Identifying Terms
Another way in which something can fail to function as a trademark is if it will be perceived as conveying an idea or a message, rather than a particular company. A company can try and claim rights to phrases such as “Land of the Free” or “Home of the Brave.” But such phrases are more likely to be seen as expressions of American patriotism rather than designation of source.

Terms such as “Silver Sisters” or “Silver Fox” are another good example of this. These phrases refer to informal groups or categories of people. Because they are commonly used in everyday conversation, they also will not be able to indicate the source of any particular goods or services.

The good news is that there is a relatively easy way to overcome this type of refusal. The bad news, however, is that the solution requires a lot of time: five years to be exact. While trademarks may fail to designate source in the present this does not mean that they will never be able to do so.

When a seller engages in exclusive use of a non-functioning trademark, over time consumers generally will come to see that as a designating the source. This is referred to as “secondary meaning” or “acquired distinctiveness” and a seller who is able to demonstrate that their mark has obtained it will be able to overcome a failure to function refusal.

The Trademark Office has stated, as a general rule, that five years of exclusive use is sufficient to show acquired distinctiveness. This is great news for those who have engaged in extensive use of their mark, but of little help to one who has only been using it for a year or two.

A failure to function refusal can be a significant obstacle in the trademark registration process. Though it is not insurmountable, it is far better to take preventative measures to avoid the issue all together. By understanding the reasons behind such refusals and taking steps to ensure that a mark is used as a source identifier, businesses can improve their chances of successfully registering their trademarks. Selecting a distinctive mark and submitting proper specimens are crucial steps toward navigating the USPTO’s examination process and securing valuable trademark protection.