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What Exactly Does “Failure to Function as a Trademark” Mean?

by | Feb 4, 2021 | Intellectual Property, Trademark

Failure to function as a trademark” is one of the reasons the United States Patent and Trademark Office (USPTO) may refuse to register an applicant’s proposed trademark. What does it mean? How can this happen?  

Quite simply, not all words, designs, or symbols used by business owners in commerce to sell goods or services function as trademarks — regardless of the trademark applicant’s intent. A word, design, or symbol does not function as a trademark unless it clearly conveys to consumers a single source of goods or services.  

When Might Words and Phrases Not Function as Trademarks?

Let’s look at a couple of “failure to function as a trademark” examples.

Recently, the trademark application for I LOVE YOU SO MUCH in the Class for Charitable fundraising services was refused registration by the USPTO. Why? Because the “phrase is so widespread that it is incapable of functioning as a service mark.” In re Bunkhouse Management, LLC, Serial No. 87539883 (TTAB January 29, 2021).

In 2019, the USPTO refused to register INTELLIGENCE OF THINGS because the phrase did not perform the desired service mark function for “supply chain management services, custom manufacture of electronics and engineering services,” and did not fall with the Lanham Act’s definition of a service mark. In re Flex Ltd., Serial Nos. 864553853 and 86493735 (TTAB December 9, 2019).  

Why? The phrase was considered a “merely informational and widely used phrase” because the evidence presented showed that many people have a common and consistent understanding of the phrase as referring to the merging of the Internet of Things and artificial intelligence. 

The USPTO focuses on the public perception of the phrase and not whether the owner/applicant intends or wants the phrase to function as a trademark.  

Simply selling something with the word, phrase, or logo on it will not work, either.

Often, potential clients will ask to register a trademark, but will not have a product or service associated with that word, phrase, or symbol. So they decide to place the word, phrase, or symbol on bumper stickers or the front of T-shirts and sell them.

Unfortunately, the USPTO will not accept this. Instead, they will refuse the trademark application as “merely an ornamental or informational feature,” since the word, phrase, or symbol does not convey to consumers a single source of goods or services.

What Makes a Word, Phrase, or Symbol a Strong Trademark? 

The strongest trademarks are arbitrary and fanciful. Strong marks are not commonly used phrases. They do not describe the services or products. Strong marks serve as a single source identifier to consumers for the goods and services that are being offered in commerce.

Take the time to develop a strong trademark that distinguishes your goods and services from competitors. And if you are considering registering a word, phrase, or design as a trademark, speak with an experienced IP lawyer to make sure your trademark application is not refused for failing to function as a trademark. 

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