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.