1202.17(c) Failure to Function

The USPTO will not register an applied-for designation unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Team Jesus LLC, 2020 USPQ2d 11489, at *2 (TTAB 2020) (quoting In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960) ("Before there can be registrability, there must be a trademark (or a service mark). . . ."); 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 Tex. With Love, LLC, 2020 USPQ2d 11290, at *2-3 (TTAB 2020) (quoting In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1713 (TTAB 2016) (citing In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009); 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 of whether a universal symbol in a proposed mark functions as a source indicator involves considering the meaning and significance of the symbol, the nature of the use of the symbol in the relevant field or marketplace, and the impression created when the symbol is used in connection with the identified goods or services. Cf. Univ. of Ky. v. 40-0, LLC, 2021 USPQ2d 253, at *25 (TTAB 2021) (citing In re Greenwood, 2020 USPQ2d 11439, at *2 (TTAB 2020)) ("The critical inquiry in determining whether a proposed mark functions as a trademark [or service mark] is how the relevant public perceives the term sought to be registered."); In re Tex. With Love, LLC, 2020 USPQ2d 11290, at *2 (TTAB 2020) (quoting In re Eagle Crest, Inc., 96 USPQ 1227, 1229 (TTAB 2010)).

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 similar 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 (see TMEP §1202.17(c)(i)(A)), (2) conveys an informational message (though not necessarily about the goods or services themselves) (see TMEP §1202.17(c)(i)(A)), or (3) serves only as ornamentation on the goods or services (see TMEP §1202.17(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 Ocean Tech., Inc., 2019 USPQ2d 450686, at *1, *9 (TTAB 2019) (holding the mark ALL NATURAL 100% REAL CALLINECTES CRAB GOURMET CRABMEAT PASTEURIZED and the same mark with the additional wording FROM NORTH AMERICA, which both included a design of an accurate pictorial representation of a crab, failed to function as marks for crabmeat); In re Schwauss, 217 USPQ 361, 362-63 (TTAB 1983) (holding the mark FRAGILE appearing in a "jarred or broken" stylization failed to function as a mark for labels and bumper stickers); TMEP §1202.04(a). 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, https://www.graphicproducts.com/biohazard-signs/?page=1 (accessed June 16, 2021).

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 Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *18 (TTAB 2019) (affirming refusal to register SCOOP for ice cream and frozen confections "because, at most, it merely informs purchasers of the serving size of the goods"); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (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. Cf. In re TracFone Wireless, Inc., 2019 USPQ2d 222983, at *2 (TTAB 2019) (affirming refusal to register UNLIMITED CARRYOVER for telecommunications services because the phrase "simply provides information about the services" and applicant’s manner of use underscored and illustrated that meaning).

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 proposed mark does not directly impart information about goods or services, it may nonetheless fail to function as a mark if it merely conveys ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages in common use. Cf. In re Team Jesus, LLC, 2020 USPQ2d 11489, at *3 (TTAB 2020) (citing In re Mayweather Promotions, LLC, 2020 USPQ2d 11298, at *1 (TTAB 2020)). For example, common phrases and slogans that are frequently displayed by many different parties on various products or with various services are not likely to be viewed as source indicators, even if the matter is being used in a non-ornamental manner. Cf. In re Mayweather Promotions, 2020 USPQ2d 11298, at *2; In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1153 (TTAB 2019). Instead, such goods would likely be purchased for the message the phrase or slogan conveys. Cf. In re Wal-Mart Stores, 129 USPQ2d at 1152. See TMEP §1202.04 regarding marks consisting of 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 or in connection with the services at issue or analogous goods or services. Cf. In re Wal-Mart Stores, 129 USPQ2d at 1153-56. 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. Cf. In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *3. 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 proposed mark is capable of serving as a mark 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 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.

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).