904.07(b) Whether the Specimen Shows the Applied-for Mark Functioning as a Mark

The examining attorney must also evaluate the specimen to determine whether the applied-for mark is used in a way that shows that: (1) it identifies the goods/services of the applicant and distinguishes them from the goods/services of others; and (2) it indicates the source of those goods/services. If use on the specimen fails in either regard, the record lacks the requisite evidence that the applied-for mark functions as a mark. The following non-exhaustive list reflects examples where review of the specimen would indicate a failure to function as a mark:

Applied-for mark is used solely as a trade name (TMEP §1202.01)
Applied-for mark is mere ornamentation (TMEP §1202.03);
Applied-for mark is merely informational matter (TMEP §§1202.04 and 1301.02(a));
Applied-for mark identifies the name or pseudonym of a performing artist or author (TMEP §1202.09(a));
Applied-for mark identifies the title of a single creative work (TMEP §1202.08);
Applied-for mark identifies a model number or grade designation (TMEP §1202.16);
Applied-for mark is merely a background design or shape that does not create a commercial impression separable from the entire mark (TMEP §1202.11);
Applied-for mark identifies a process, system, or method (TMEP §1301.02(e));
Applied-for mark is used to refer to activities that are not considered "services" (TMEP §§1301.01 et seq.);
Applied-for mark is used solely as a domain name (TMEP §1215.02);
Applied-for mark is used solely to identify a character (TMEP §1301.02(b)).

If the deficiency in a specimen amounts to failure to demonstrate use of the applied-for mark as a trademark and/or service mark, the examining attorney must issue a "failure-to-function" refusal of registration on the ground that the applied-for mark does not function as a trademark or service mark, in addition to advising the applicant of the appropriate response options, which may include requiring the applicant to submit a substitute specimen. The statutory basis for refusal is 15 U.S.C. §§1051, 1052, and 1127 for trademarks, or 15 U.S.C. §§1051, 1052, 1053, and 1127 for service marks. See In re Osmotica Holdings Corp., 95 USPQ2d 1666 (TTAB 2010); In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008); In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008). Generally, when initially refusing registration on the ground that the subject matter does not function as a mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a trademark or service mark and, if necessary, a supporting affidavit or declaration. See TMEP §904.05 regarding affidavits supporting new specimens. However, in instances where the nature of the mark, such as with informational marks, indicates that consumers would never perceive the mark as source indicating, regardless of the manner of use, no such advisory need be given.

904.07(b)(i) Action After Submission of Substitute Specimen

Because the examining attorney has advised the applicant of the appropriate response options, which may include the general requirements for a substitute specimen, if the applicant responds to the failure-to-function refusal by submitting a specimen that does not show the mark in use in commerce for a reason such as those set out in TMEP §904.07(a), the examining attorney must issue a final refusal, as no new issue is presented. For example, if the original specimen was refused as ornamental and the substitute specimen does not show the applied-for mark, the examining attorney may issue a final refusal. By contrast, if the applicant responds to the Office action refusing registration by submitting a substitute specimen that reflects failure to function as a mark for a different substantive reason, such as the examples listed in TMEP §904.07(b), the examining attorney must issue a new nonfinal Office action because the substitute specimen presents a new issue. For example, if the original specimen shows the mark used merely as a domain name, and the applicant submits a substitute specimen that shows the mark used in an ornamental manner, this presents a new issue. Therefore, the examining attorney must issue a new refusal as to the substitute specimen, and must maintain the prior failure-to-function refusal as to the original specimen and indicate that the substitute specimen did not obviate the initial refusal. If the applicant responds to the refusal by submitting a substitute specimen that fails to show the applied-for mark functioning as a trademark or service mark for the same reason as the original specimen (e.g., the original specimen was refused as ornamental and the substitute specimen also reflects ornamental use), this does not present a new issue and the examining attorney must issue a final Office action.

If the applicant responds to the failure-to-function refusal by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney should issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.

If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal), because the substitute specimen does not present a new issue. See TMEP §714.05.

See TMEP §714.05 regarding new issues requiring issuance of nonfinal action, §§1202 et seq. regarding matter that does not function as a trademark, and TMEP §§1301.02 et seq. regarding matter that does not function as a service mark.