1202.04(d) Response Options
An applicant may respond to a merely informational failure-to-function refusal by submitting evidence demonstrating that the matter is perceived as indicating a single source for the identified goods or services. See In re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (reversing the refusal to register QUALITY THROUGH CRAFTSMANSHIP for radio equipment, finding that the wording functioned as a mark because applicant extensively advertised the slogan, using it in the manner of a trademark on the goods, and the examiner failed to show others using the wording).
The amount and nature of evidence that may be sufficient to establish that the matter would be perceived as source indicator rather than merely informational is determined on a case-by-case basis. The more generalized or commonplace and widely used the matter is, the more likely it would be perceived as merely informational and the less likely it would perceived as indicating the source of the relevant goods/services. See In re Eagle Crest, 96 USPQ2d 1227, 1229 (TTAB 2010).
Mere claims of long-time use or substantial sales and advertising generally do not prove recognition of the matter as a mark and will not obviate the failure-to-function refusal. See In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Wakefern Food, Corp., 222 USPQ 76, 79 (TTAB 1984); In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984).
Similarly, submission of an otherwise acceptable specimen bearing the proposed mark, such as a hang tag or label, will not obviate the refusal because the mere fact that the matter appears on a technically good specimen does not mean that it would be perceived as a mark. See D.C. One Wholesaler, Inc., 120 USPQ2d at 1716 (finding that the phrase I ♥ DC "does not create the commercial impression of a source indicator, even when displayed on a hangtag or label"). If the evidence shows that the public would not perceive the proposed mark as serving to indicate the source of the identified goods or services, it does not function as a mark and may not be registered regardless of the manner of use depicted on the specimens or the filing basis on which applicant relies. The examining attorney should not suggest that a substitute specimen be submitted or that the application be amended to an intent-to-use filing basis.
Furthermore, an applicant cannot overcome a failure-to-function refusal issued on the ground that the matter is merely informational by attempting to amend the application to seek registration on the Supplemental Register or pursuant to §2(f). See In re Eagle Crest, 96 USPQ2d at 1229. Matter that does not operate to indicate the source or origin of the identified goods or services and distinguish them from those of others does not meet the statutory definition of a trademark and may not be registered, regardless of claims of acquired distinctiveness or the register on which registration is sought. See In re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (finding that the phrase THE BEST BEER IN AMERICA "is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark" and is incapable of acquiring distinctiveness under section 2(f)); In re Helena Rubinstein, Inc., 410 F.2d 438, 441-42, 161 USPQ 606, 608-09 (C.C.P.A. 1969) (finding PASTEURIZED for face cream as so highly descriptive that it fails to function as a source identifier, noting that a proposed mark "cannot properly be registered as a trademark, even on the Supplemental Register, unless it is intended primarily to indicate origin of the goods and is of such a nature that the ordinary purchaser would be likely to consider that it indicated such origin"); In re Remington Prods., Inc., 3 USPQ2d at 1715 (affirming a failure-to-function refusal and denying a claim of acquired distinctiveness for the mark PROUDLY MADE IN THE USA for electric shavers and parts thereof, noting that applicant’s "substantial sales and advertising of its product . . . does not provide recognition by the public of the subject slogan as a trademark."); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710 (TTAB 2016) (granting petition to cancel a registration on the Supplemental Register because the mark failed to function as a trademark).
See TMEP §714.05(a)(i) regarding amendment to the Supplemental Register or submission of a claim of acquired distinctiveness and §1212.02(i) regarding §2(f) claims as to incapable matter.