1301.04(g)    Grounds for Refusal

1301.04(g)(i)    Failure to Show the Mark Used in Commerce

Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, are the statutory bases for refusing a specimen that does not meet the requirements of an acceptable service-mark specimen; such specimen is not acceptable because it does not show the mark in "use in commerce." For instance, if the mark does not appear on the specimen or the specimen shows use of the mark in connection with goods rather than the identified services, the specimen must be refused for failure to show service-mark use in commerce in connection with the identified services.

The applicant’s response options include submitting an acceptable substitute specimen or, if appropriate, amending the application to a §1(b) filing basis. See TMEP §806.03(c) regarding amending filing basis from §1(a) to §1(b), and §904.07 regarding requirements for substitute specimens. In some cases, the applicant may respond by providing clarification of the nature of the original specimen submitted, or an explanation of the content of the original specimen, to justify its acceptability.

The examining attorney may consider any of the following facts and evidence properly made of record:

  • declarations from persons with firsthand knowledge of the facts, with a sufficiently detailed explanation of how the mark is used in advertising or rendering the services or how the services are advertised or rendered;
  • clarification of the specimen of record, such as an explanation of the nature, content, or context of use of the specimen (this explanation need not be verified with a declaration);
  • evidence, such as declarations or industry-related periodicals, regarding industry practice with respect to how marks and services are promoted in advertising or how the services are rendered;
  • additional background materials, such as printouts showing information on subsequent webpages from the applicant’s website or subsequent screenshots of an electronic device on which the services may be accessed, rendered, and experienced (this matter generally need not be verified with a declaration); and/or
  • responses to any Trademark Rule 2.61(b) request for information.

If the specimen of record, the specimen description, the applicant’s response and explanations, and any additional proffered evidence are unpersuasive, a final refusal must issue, if the application is otherwise in condition for final. See 37 C.F.R. §2.63(b); TMEP §714.03.

1301.04(g)(ii)    Failure to Show the Mark Functioning as a Service Mark

A specimen may show the mark used as something other than a service mark for the identified services. For instance, it may show the mark used solely as a trade name, only as the name of a downloadable or recorded computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See TMEP §§1202.01, 1202.03–1202.04, 1301.02(a), (e), (f). In such cases, the mark does not function as a service mark to identify and distinguish the applicant’s services and indicate their source. Thus, a failure-to-function refusal should issue under Trademark Act Sections 1, 2, 3, and 45 for marks seeking registration on the Principal Register. 15 U.S.C. §§1051─1053,  1127. For marks 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. However, if the mark identifies, for example, both a process and the identified services and the requisite mark-services association is present, no failure-to-function refusal should issue. See TMEP §§1301.02(e), 1301.04(j) (Example 21 (LEADING EDGE TONERS)).

As stated above, the issue of whether a designation functions as a mark usually is tied to the use of the mark, as evidenced by the specimen. Therefore, unless the drawing and description of the mark are dispositive of the failure to function without the need to consider a specimen, generally no refusal on this basis will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen(s) with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the matter presented for registration does not function as a mark, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a failure-to-function refusal where the mark on its face, as shown on the drawing and described in the description, reflects a failure to function. See In re AC Webconnecting Holding B.V., 2020 USPQ2d 11048, at *7 (TTAB 2020) (holding an application for registration filed pursuant to §44(e) subject to the requirement that the applied-for mark function as a mark); In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).

See TMEP §1202 regarding use of subject matter as a trademark; §§1302–1305 regarding use of subject matter as a collective mark; and §§1306–1306.06(c) regarding use of subject matter as a certification mark.