1202.19(f) Failure-to-Function Refusal – Inconsistent Goods or Services
When the drawing shows the repeating pattern appearing on an item, the examining attorney must determine whether all of the identified goods or services are consistent with the item depicted, such that the mark shown accurately reflects how the mark appears on all of the identified goods and services and could actually serve as a source indicator for them.
For example, in an application that depicts the mark as a repeating pattern appearing on the bill of a baseball cap shown in broken lines, the cap is not part of the mark, but the drawing nonetheless limits the mark to the particular manner of use shown. Thus, if the application identifies the goods as baseball caps, shoes, eyeglasses, and purses, the identified baseball caps are consistent with the drawing, but the identified shoes, eyeglasses, and purses are not, because the mark obviously cannot be applied to those goods in the manner depicted in the drawing. If, on the other hand, the drawing depicts a repeating pattern applied to the handle of a hand rake, any other similar type of implement with a handle that is listed in the identification of goods should be considered to be consistent with the drawing.
If the drawing shows the repeating-pattern mark appearing on packaging for goods, the identified goods should be considered consistent with the drawing if they could be sold in the packaging shown. For instance, if the packaging shown is a bottle, then goods that are not normally packaged in a bottle should be considered inconsistent with the nature of the mark as depicted in the drawing, assuming there is no evidence that the applicant’s goods actually are packaged in that manner.
The fact that an application identifies services, but contains a drawing showing the mark applied to a particular object, does not necessarily raise an issue of inconsistency. Marks of this nature may function as source indicators for services. For example, a repeating pattern applied in a particular manner to the exterior of an airplane could be perceived as a source indicator for airline transportation services. However, if the application identifies both goods and services, the examining attorney must consider whether the mark shown in the drawing could actually function as both a trademark for the identified goods and a service mark for the identified services.
The determination of whether all of the identified goods or services are consistent with the drawing is distinct from the determination of whether the drawing agrees with the specimen of record. See TMEP §1202.19(d). Thus, if the application contains specimens showing that the drawing is not a substantially exact representation of the mark as used on the goods or packaging, or in connection with the services, the examining attorney must also issue any applicable requirement or refusal on that basis. See TMEP §807.12(a).
1202.19(f)(i) Statutory Basis for Refusal
If the examining attorney determines that any of the identified goods or services are inconsistent with the drawing, the examining attorney must refuse registration as to those goods or services on the ground that the mark, as depicted in the drawing, fails to function as a mark for them. Cf. TMEP §§1202.02(f)(i), 1202.02(f)(ii). The statutory bases for the refusal are Trademark Act §§1, 2, and 45 for trademarks, and §§1, 2, 3, and 45 for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127.
1202.19(f)(ii) Response Options
The applicant may overcome the refusal by deleting the inconsistent goods or services, or by submitting evidence that the mark, as depicted in the drawing, does in fact function as a mark for the relevant goods or services. In most instances, the applicant will be unable to overcome the refusal by amending the drawing to cover all of the identified goods or services because it will be impossible to do so using a single depiction of the mark and the necessary changes are likely to result in a material alteration of the mark on the original drawing. See TMEP §1202.19(c). In addition, dividing out the inconsistent goods or services typically is not an appropriate response option in these cases because the drawing in the child application would need to depict an essentially different mark, which would also be a material alteration of the mark in the original drawing.