Was Your Trademark Rejected for Failure to Function?

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.

What Is Failure to Function?

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.

When Will a Trademark Be Rejected for Failure to Function?

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:

• The mark is a commonly used message.
• The mark is widely used to convey political, religious, or social sentiments.
• The mark is informational or descriptive.
• The mark indicates support or association with a particular message.

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.

What Are Examples of Trademarks That Have Been Rejected for Failure to Function?

Several recent cases demonstrate when a mark fails to function as a source identifier:

• “Texas Love.” A company sought to trademark the term “Texas Love” for hats and shirts.  The TTAB rejected the mark because many people use that phrase to convey support for or affiliation with the State of Texas rather than as a source identifier.  (See In re Texas With Love, LLC, 2020 USPQ2d 11290 (TTAB 2020))
• “Mama Bear.” The TTAB refused to register the mark “MAMA BEAR” on the grounds that the term is widely used in reference to “The Story of Goldilocks and the Three Bears” as well as in discussing parenting.  (See In re Sara Marie Duncan d/b/a Loved by Hannah and Eli, Inc., Serial No. 86923714 (TTAB 2/3/2021)).
• “John 15:11 Publications.” Registration was sought for this mark to be used generally for inspirational and religious fiction and non-fiction books.  The mark was rejected on the rationale that it was generally used by religious/spiritual leaders and thus, failed to function as a source identifier. (See In re Lisa Brewer Buffaloe, Serial No. 87880862 (TTAB 9/18/2019))
• “Team Jesus.” The TTAB found that this term is commonly used to convey a sentiment of affiliation with Jesus and the Christian religion.  (See In re Team Jesus LLC, 2020 USPQ2d 11489 (TTAB 2020)).

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.

CONCLUSION

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.

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