1202.17(c) Failure to Function
The USPTO will not register a mark unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) ("Before there can be registration, there must be a trademark . . . ."); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) ("Registration presupposes the existence of a trademark to be registered."); TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See 15 U.S.C. §1127; TMEP §1202. Not every designation that a party places on goods or packaging, or uses in connection with services, necessarily performs these source-indicating functions, regardless of the party’s intentions when adopting the designation. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) ("As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself."). Some designations can never serve as a source indicator. See In re Eagle Crest, Inc., 96 USPQ2d at 1229; Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973).
1202.17(c)(i) Determining Whether a Universal Symbol Functions as a Source Indicator
The determination as to whether a universal symbol in a mark functions as a source indicator involves considering the significance of the symbol, the nature of the symbol’s use in the relevant marketplace, and the impression created when the mark is used in connection with the identified goods or services. See In re Eagle Crest, Inc., 96 USPQ 1227, 1229 (TTAB 2010) (noting that, to determine how a designation would be perceived by the relevant public, the Board "look[s] to the specimens and other evidence of record showing how the designation is actually used in the marketplace"); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) ("A critical element in determining whether matter sought to be registered is a trademark is the impression the matter makes on the relevant public. Thus . . . the critical inquiry is whether the asserted mark would be perceived as a source indicator. . . ."); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998) ("In order to assess the commercial impact created by the designation . . . we look to the specimens and other materials which show how the mark is actually used in the marketplace.").
Relevant evidence of a symbol’s significance and usual manner of use includes the resources referenced in TMEP §1202.17(b)(i), any other competent materials indicating the meaning of the symbol, and Internet excerpts or trade matter showing the symbol being used in a particular field or context, or in connection with the relevant goods or services.
Weighing these considerations in view of the available facts and evidence may lead the examining attorney to the conclusion that the mark does not serve as a source indicator, but instead fails to function because it (1) imparts information about the goods or services, (2) conveys an informational message (though not necessarily about the goods or services themselves), or (3) serves only as ornamentation on the goods or services. See TMEP §§1202.17(c)(i)(A)-(c)(i)(B).
1202.17(c)(i)(A) Informational Universal Symbols
Universal Symbols that Impart Information About the Goods or Services
Merely informational matter is not registrable as a trademark or service mark. See TMEP §1202.04. When a universal symbol in a mark is used in its usual context or field, or with relevant goods or services, it will likely impart its generally recognized meaning and thus perform only an informational function, rather than serve to identify any single source of the goods or services. Cf. In re Schwauss, 217 USPQ 361 (TTAB 1983) (holding mark consisting of FRAGILE in a "jarred or broken" stylization failed to function as a trademark for labels and bumper stickers). For instance, because the biohazard symbol commonly appears on items to indicate the presence of hazardous materials, the symbol is unlikely to function as a trademark on goods such as containers for disposing of medical waste. See, e.g., Graphic Products, Biohazard Signs, http://www.graphicproducts.com/sign-printers/biohazard-signs.html (accessed Aug. 24, 2012).
In these circumstances, the symbol’s position, prominence, and surrounding context on the specimen of use will not be as significant in the analysis, because the symbol will function only as informational matter regardless of its manner of use on the specimen. Cf. In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1460-61 (affirming refusal to register DRIVE SAFELY because "to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . ."); In re Schwauss, 217 USPQ at 362 ("[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object."). Nonetheless, the examining attorney should analyze how the mark (and the symbol in it) is used on the specimen because it may lend further support to the failure-to-function refusal.
Sometimes a symbol is applied to goods or services outside the symbol’s normal context and the symbol could therefore serve a source-indicating function. Thus, the biohazard symbol could function as a service mark for live musical-performance services, for example, because the symbol would not provide any relevant information about the services, even when encountered by someone who knows what the symbol usually means.
Universal Symbols that Convey an Informational Message
Even if a mark does not directly impart information about goods or services, it may nonetheless fail to function if it conveys an informational message to others. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1230-31 (TTAB 2010). For example, common phrases and slogans that are frequently displayed by many different parties on various goods are not likely to be viewed as source indicators, even if the matter is being used in a non-ornamental manner. See id. Instead, such goods would likely be purchased for the message the phrase or slogan conveys. See id. at 1230. See TMEP §1202.04 regarding informational matter.
Likewise, when certain commonly used universal symbols appear on goods such as clothing, fashion accessories, and household items, they would likely be perceived as conveying an informational message and the goods featuring these symbols would likely be purchased for that reason. For example, evidence may show that when the recycling symbol appears on the upper-left chest area of a t-shirt, those encountering the shirt are likely to assume that it indicates support for recycling or environmental causes in general. Or evidence may support the conclusion that a peace symbol used on t-shirts or stickers likely will not function as mark, because even if it is not ornamental and does not necessarily provide any particular information about the goods themselves, it is informational in the sense that it conveys a message of supporting peace.
The examining attorney may support a failure-to-function refusal in these cases by providing evidence that indicates the widely recognized meaning of the symbol, establishes that the symbol is commonly used to convey particular information, and shows that the symbol commonly appears on the goods at issue or analogous goods. See id. Factors such as the symbol’s position and prominence on the goods, as shown by the specimen of use, may also support the determination that the matter will be perceived only as conveying a message. See id. at 1230-31. As with any other substantive refusal, the amount, type, and nature of the evidence required to support a failure-to-function refusal will vary depending on the facts of the particular application.
Although this issue is more likely to arise when universal symbols are displayed on goods, it is also possible for a universal symbol to convey an informational message when used in connection with services.
1202.17(c)(i)(B) Ornamental Universal Symbols
Matter that serves only as an ornamental feature of goods does not identify and distinguish the goods and, thus, does not function as a trademark. TMEP §1202.03. Like any other design element, universal symbols may be used ornamentally on goods such as clothing, jewelry, fashion accessories, and household items. In these instances, the symbol’s position, prominence, and surrounding context on the specimen are particularly significant in determining whether the matter serves as ornamentation. For more information on the relevant considerations, see TMEP §§1202.03–1202.03(d).
The examining attorney should not suggest the usual response options for an ornamental refusal (i.e., showing secondary source, claiming acquired distinctiveness, or amending to the Supplemental Register) unless the mark is capable of serving as a trademark and does not also fail to function because it imparts information or conveys an informational message. See TMEP §1202.03.
1202.17(c)(ii) Mark Consists Entirely of a Universal Symbol that Fails to Function
If a mark consists entirely of a universal symbol and the examining attorney determines that the universal symbol fails to function as a source indicator for the identified goods, the examining attorney must issue a refusal under Trademark Act Sections 1, 2, and 45. 15 U.S.C. §§1051, 1052, 1127; see In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1863 (TTAB 2006) ("It is well established that the refusal of failure to function is properly based on Sections 1, 2 and 45 of the Act."). For service marks, the refusal is based on Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§1051, 1052, 1053, 1127. For applications seeking registration on the Supplemental Register, the statutory basis for the failure-to-function refusal is Trademark Act Sections 23 and 45. 15 U.S.C. §§1091, 1127; see TMEP §1202.
When issuing a failure-to-function refusal, the examining attorney must explain the particular reasons the mark does not function as a trademark or service mark and provide sufficient evidence in support of the explanation. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (finding that the examining attorney had "shown prima facie that the slogan [ONCE A MARINE, ALWAYS A MARINE] would be perceived solely as informational matter rather than as a trademark and applicant [had] submitted no evidence to rebut that showing"); TMEP §§1202, 1301.02(a). See TMEP §§1202.17(b)(i) and 1202.17(c)(i) for further discussion of evidence.
1202.17(c)(ii)(A) Applications Based on Sections 1(b), 44, or 66(a)
Generally, the failure-to-function refusal is a specimen-based refusal. TMEP §1202. However, the examining attorney may issue a failure-to-function refusal for applications based on §1(b), §44, or §66(a) if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark. See TMEP §1202; cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, "it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark").
If the examining attorney is otherwise issuing an Office action and anticipates refusing a mark in a §1(b) application on failure-to-function grounds once the applicant submits a specimen with an allegation of use, the examining attorney should advise the applicant of the potential refusal. If possible, this should be done in the initial Office action. However, failure to provide an advisory does not preclude an examining attorney from later refusing registration. See TMEP §1202.
1202.17(c)(ii)(B) Applicant’s Response to Refusal
If a mark fails to function because it consists of a universal symbol that is informational or that conveys an informational message, the examining attorney should not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register. The relevant issue is not whether the mark is distinctive, but, instead, whether the matter in question even functions as a mark. See In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (agreeing with the examining attorney that "evidence of distinctiveness under Section 2(f) of the Act is irrelevant to the issue of whether the subject phrase [at issue] functions as a technical service mark"). Therefore, neither a claim of acquired distinctiveness under Trademark Act Section 2(f) nor an amendment to the Supplemental Register is a proper response to the refusal. See In re Wakefern Food Corp., 222 USPQ at 79. Furthermore, allowing registration in these instances, either on the Principal Register under Section 2(f) or on the Supplemental Register, would inhibit others from using merely informational matter that should be freely available to use. See TMEP §1202.04; cf. In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1460-61 (Affirming refusal to register DRIVE SAFELY because "to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase . . . to promote safe driving and/or that purchasers can drive safely in their make of automobiles. . . ."); In re Schwauss, 217 USPQ at 362 ("[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object.").
In addition, the examining attorney should not suggest that the applicant submit a substitute specimen or amend to an intent-to-use filing basis in these cases. If the mark is informational or conveys an informational message, the applicant likely will be unable to provide a specimen showing proper trademark or service mark use. The applicant may amend the application to an intent-to-use basis, but it likely will only temporarily overcome the refusal, given that a specimen showing proper trademark or service mark use is required before a registration may issue. See TMEP §1103. The examining attorney must review any substitute specimen submitted to confirm that refusal remains warranted.
Finally, if a mark consisting of a universal symbol fails to function only because it is used in an ornamental manner on the specimen, and it is possible that the mark could function if used in a trademark manner, then all of the response options discussed immediately above should be suggested by the examining attorney, if otherwise appropriate.
1202.17(c)(iii) Mark Includes a Universal Symbol that Fails to Function
If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears along with other non-source-indicating matter, the examining attorney must issue a failure-to-function refusal. See TMEP §1202.17(c)(ii).
If a universal symbol fails to function as a source indicator because it is informational or conveys an informational message, and it appears in a non-unitary manner with other registrable matter that is arbitrary, fanciful, suggestive, or otherwise source-indicating, the examining attorney must require a disclaimer of the universal symbol. See Trademark Act Section 6(a), 15 U.S.C. §1056(a); TMEP §§1213, 1213.01(b), 1213.02, 1213.03(a). The examining attorney should not suggest that the applicant claim acquired distinctiveness in part as to the symbol. See TMEP §1202.17(c)(ii)(B).
An applicant may also delete a purely informational universal symbol that appears along with other registrable matter, provided the symbol is separable from the other matter and the deletion does not materially alter the commercial impression of the mark. See TMEP §807.14(a).