The USPTO will not register a trademark unless it functions as a trademark.

Well, what does that mean?

Remember that trademarks should let consumers identify the source of a product or service.  So, with this Refusal, the USPTO is arguing that your mark is not actually functioning as a trademark, and is not allowing consumers to actually identify the source of products and services.

Let’s dig a little deeper.

The USPTO will issue a Failure to Function if your trademark is “merely informational”.   This means your trademark is merely providing information, and not acting as a source-indicator of your brand.

In this determination, the USPTO can consider third-party evidence, and will even look at your specimen, to determine whether the public would only view your trademark as merely informational.  

Let’s break it down with examples.

First, this can occur when your trademark is just providing general information about goods and services.

So, let’s say I’m selling plates and I apply for a trademark with the word “FRAGILE”, and put the tag of FRAGILE on a box.

When you see that word FRAGILE, would you think of a brand?  Probably not, right?  You’d just think of how many businesses put the word fragile on boxes and packages to warn you to be gentle with the products.

In that way, it’s not functioning as a trademark because it’s just providing general information about your goods being delicate.

Second, this can occur when it is a widely-used message.

More specifically, this can be a commonplace message, or it could be a social, political, or similar message.

One example is BOSTON STRONG, which is a common expression to support those affected by the Boston Marathon bombing.

When Lebron James filed for the trademark TACO TUESDAY, he received a Failure to Function Refusal for a commonplace message.  

Consumers would view the wording in these examples as commonplace messages, and not as indicating the source of a company’s goods or services.

Third, it could be a direct quote, passage, or citation to a religious text.

An example of this would be “IN THE BEGINNING GOD CREATED THE HEAVENS AND THE EARTH GENESIS 1:1”.  This is a direct quote from religious text, and would not be perceived as a trademark.  

So, how do you respond to this Refusal?

First, you want to look to see if the USPTO provided persuasive evidence for this Refusal.

So, if my trademark was TACO TUESDAY, I’d look to see if the USPTO attached a lot of evidence in the Office Action of others using this widely-used message.

I’d also google this term to see if it is commonly used.  Here, if you googled TACO TUESDAY, you’d see that there is a LOT of third-party evidence of restaurants and bars using these words to advertise their goods and services. If you find that there is a lot of evidence, then it is more difficult to overcome this Refusal.

So, you should consider whether the USPTO provided sufficient evidence to establish this refusal, or if you consider the evidence to be weak.

And you can also consider whether you have evidence that shows that consumers WOULD see your trademark as a source indicator of your goods and services.  This is unfortunately difficult to do when there are many examples of the industry commonly using the message, such as the TACO TUESDAY example.  But if the USPTO did not provide persuasive third-party evidence, you would want to point this out in your Response.

‍

Second, if you submitted a specimen, or proof of your trademark in commerce, the USPTO will consider whether your applied-for trademark actually fails to function as a trademark on your specimen. 

Normally, failure to function refusals are issued when you’ve already submitted a specimen, unless the USPTO finds a lot of evidence that the applied-for mark fails to function as a trademark without having to even look at a specimen as additional evidence.

This was the case with Lebron James’ application.  He filed under an intent to use 1(b) basis, so he did yet have to provide a specimen in his initial application.  But the USPTO found enough third-party evidence of others using this trademark as a commonplace message to support a Failure to Function Refusal.

But let’s say you did submit a specimen with your application.

One question you might ask is: Would consumers view this trademark as a source of my goods and services, or would it be viewed as merely informational?

Let’s consider if your trademark was HOURS OF ENERGY NOW, and you use a specimen with this wording in the fine print.  When a consumer looked at this product, would they view this wording as a trademark?  Probably not.  It’s not featured prominently, and is included in an area of the bottle where basic information is provided.  They’d likely just view it as providing information about your goods.

But, let’s say you submitted a specimen that has HOURS OF ENERGY NOW prominently displayed as the only wording on a bottle.  In that case, consumers could arguably consider the wording to act as a trademark as opposed to being merely informational.

Remember that regardless of how your trademark is shown on the specimen, or if you didn’t even provide a specimen at all yet, the USPTO might have enough evidence to support a Failure to Function refusal by providing third-party evidence.

Unfortunately, unlike some of the other Refusals, you cannot amend to the Supplemental Register, or argue that your mark has acquired distinctiveness, in order to overcome this Refusal.