1202.17(c)(ii)    Mark Consists Entirely of a Universal Symbol that Fails to Function

If a proposed 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 to register the mark on the Principal Register under Trademark Act Sections 1, 2, and 45. 15 U.S.C. §§1051, 1052, 1127. 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.

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. Cf. In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *4 (TTAB 2020) (finding "the [e]xamining [a]ttorney's evidence establishes not only that PAST PRESENT FUTURE is a widely used message that conveys a concept, but also that consumers are accustomed to seeing that message displayed in a non-source identifying manner on t-shirts. Taken together, these two forms of evidence strongly support a finding that PAST PRESENT FUTURE is not perceived as a mark when used in connection with t-shirts"); In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *2-3 (TTAB 2019) (finding that the examining attorney’s dictionary and third-party website evidence "supports a finding that UNLIMITED CARRYOVER as used on the specimen will be perceived as merely an informational slogan which conveys information about [the services] rather than as a service mark to indicate source"); 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, 1301.04(g)(ii). 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, 1301.04(g)(ii).

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. TMEP §§1202, 1301.04(g)(ii). 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. Id.

1202.17(c)(ii)(B)    Applicant’s Response to Refusal

If a proposed 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. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *8;(TTAB 2019); see also TMEP §1202.04(d). The relevant issue is not whether the proposed mark is distinctive but whether it question even functions as a mark. See In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *4 (TTAB 2019) ("Matter that does not operate to indicate the source or origin of the identified services and distinguish them from those of others does not meet the statutory definition of a [trademark or] service mark and may not be registered, regardless of claims of acquired distinctiveness."); 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 TMEP §1202.04(d). 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 regarding marks consisting of merely informational matter.

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. See In re Team Jesus LLC, 2020 USPQ2d 11489, at *5-6 (TTAB 2020) (quoting D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016)); see also TMEP §1202.04(d). 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 the refusal should be maintained.

Finally, if a proposed mark consisting of a universal symbol fails to function as a mark only because it is used in an ornamental manner on the specimen, and it is possible the proposed mark could function as a mark 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. See TMEP §§1202.03-1202.03(e) regarding refusing marks on the basis of ornamentation and appropriate response options.