Registering your trademark with the United States Patent and Trademark Office (USPTO) is a good practice because it gives you the enhanced ability to enforce your rights against trademark infringers. However, not all trademarks qualify for registration. One reason your trademark may be rejected is because of its “failure to function” as a source identifier. This concept can be difficult to understand so consulting an attorney before you file an application can save time and money.
A trademark is a word, symbol, design, slogan or phrase that is used as a source identifier to identify and distinguish the goods or services offered by one business from others, even if that source is unknown. Under federal law, trademarks can be rejected for registration where the mark fails to function as a source identifier in the public’s perception. Trademarks must be distinctive. If a mark is merely informational or a widely used phrase, people are not likely to associate it with a particular business, product or service. Therefore, it fails to function as a source identifier and cannot be protected under trademark law.
Generally, the USPTO will reject a trademark for failure to function when the mark is a term or phrase that meets one or more of these characteristics:
Overall, the better the term or phrase is known, the less likely that the public will perceive it as identifying a single source of goods or services and thus, it would not be protected. Further, when a company uses marks that fall into these categories, individuals buying their goods or services are doing so because they agree with the words rather than because they associate the phrase with a particular company. Trademark law protects the use of the words in commerce as a source identifier, not as merely words.
Several recent cases demonstrate when a mark fails to function as a source identifier:
Notwithstanding these cases, if your mark is a commonly used word or phrase, you may still be protected under trademark law. The USPTO and Trademark Trial and Appeal Board (TTAB) will also consider how the mark is used including distinctive elements and positioning of the mark. Adding a design mark may also help to distinguish the words.
Ultimately, it is important to seek legal advice before filing your trademark application or, in some situations, before you decide on your mark. An attorney can evaluate your mark and guide you in presenting the strongest case possible to the USPTO.