OVERVIEW OF COMMON FAILURE TO FUNCTION REFUSALS
Failure-to-function overview
What is the function of a trademark?
– A proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services.”
What if a trademark fails to function?
– Principal Register
- It will be refused registration under Sections 1, 2, and 45 of the Trademark Act.
– Supplemental Register
- It will be refused registration under Sections 23(c) and 45 of the Trademark Act.
How can we tell if it fails to function?
- Specimens
- Evidence of record
- Mark drawing
- Mark description
Common failure-to-function refusals
– Ornamentation
– Title of a single work
– Name of artist or author
– Not goods in trade/services for others
FAILURE-TO-FUNCTION REFUSAL: ORNAMENTATION
Cannot register decorative features that don’t identify the source of the goods
- Words
- Slogans
- Designs
- Trade dress
Factors determining registrability
- Commercial impression
- Practices of the trade
- Secondary source
- Evidence of distinctiveness
Ornamentation refusal example 1
Stitching designs on the back pocket of a pair of jeans
– Refinement of a common practice in the industry
- Size of design. • Dominance of design. • Mirror image of design
Ornamentation refusal example 2
Large display of logo on the front of the garment
– Commercial impression
- Simple piping
– Practices of the trade
- Size of design. • Dominance and location of design
Ornamentation response options
- Ways to overcome the refusal
– Submit a different specimen .
– Claim acquired distinctiveness .
– Amend to Supplemental Register .
– Submit secondary source evidence.
– Amend filing basis to §1(b) intent-to-use basis.
Ornamentation TIPS
– Consider third-party use of the trademark.
– Research whether consumers are accustomed to seeing similar ornamental displays.
– For secondary source, ensure acceptable use on other goods and services.
FAILURE-TO-FUNCTION REFUSAL: TITLE OF A SINGLE WORK
– Cannot register the title of a single creative work
– Cannot register a portion of the title of a single creative work
Factors determining registrability
– Complete title of a single work
- The content doesn’t change significantly
- Is not used on a series of works
- Is not considered a single work
Single creative work EXAMPLES
– Book – Serialized writing. – Sound recording – Downloadable song – Downloadable ringtone – Film – Single radio program – Single television program – Scripted theatrical performance
Not considered a single creative work
Magazines, Newsletters, Comic books, Guide books, Printed classroom materials, Computer software, Computer games, Coloring books, Activity books, Live musical performances.
SINGLE WORK REFUSAL EXAMPLE 1
Title of prerecorded audio-visual materials
– No evidence of series of LAUGH & LEARN videos
- Content on DVD and VHS tapewas essentially the same workdelivered into two formats
Portion of title of series of books
THE MAGIC SCHOOL BUS creates a separate commercial impression from each title
– Evidence of series of books
– Evidence applicant promotes THE MAGIC SCHOOL BUS as a series title
Single work takeaways TIPS
– Remember trademarks provide protection for brands, not creative works.
– Cannot amend to Supplemental Register.
– Cannot claim §2(f) acquired distinctiveness.
FAILURE-TO-FUNCTION REFUSAL: NAMES OF ARTISTS AND AUTHORS
Artists and authors
– Cannot register the name of an author on a written work if it is used solely to identify the author
– Cannot register the name of a performing artist on a sound recording if it is used solely to identify the artist
FACTORS DETERMINING REGISTRABILITY
– Evidence of a series of works
– Evidence name identifies the source of the series
- Promotion and recognition of the name; or
- Control over the nature and quality of the goods
NAME OF ARTIST REFUSAL EXAMPLE 1
Name of artist
– Evidence of a series of musical recordings
– No evidence BLATANCY
- Controls the nature and quality of the goods
- Promoted and recognized as the source of the goods
NAME OF AUTHOR REFUSAL EXAMPLE
- Name of author
– Evidence of a series of writings
– No evidence CECIL ADAMS
- Controls the nature and quality of the goods
- Promoted and recognized as the source of the goods
AUTHOR/ARTIST RESPONSE OPTIONS
- Ways to overcome the refusal
– Submit evidence that
- Series of works; and
- Name identifies source.
– Amend filing basis to §1(b)intent-to-use basis.
– Amend to Supplemental Register.
Name of author/artist takeaways TIPS
– Refusal applies to pseudonyms.
– Refusal does not apply to services.
– Refusal does not apply to names of artists used on original works of art.
– Cannot claim §2(f) acquired distinctiveness.
FAILURE-TO-FUNCTION REFUSAL:GOODS IN TRADE/SERVICES FOR OTHERS
– Cannot register a trademark if it is not used with goods in trade
– Cannot register a service mark if it is not used with activities performed for others
GOODS IN TRADE
Factors determining registrability
– Goods must have utility to others:
- Cannot exist only to help customers obtain applicant’s primary goods or services
- Cannot be so inextricably tied to the primary goods or services that they have no existence
- Sold separately or have independent value apart from applicant’s primary goods and services
Not goods in trade
Letterhead, Invoices, Reports, Boxes, Business forms, Checkbooks, Brochures, Pamphlets, Mockups, Holiday greeting cards
Factors determining registrability
– Services must:
- Be a real activity
- Be performed for the benefit of others; and
- Be sufficiently distinct from the applicant’s principal activity
Not services for others
Concept or idea, System, Process, Method, Intranet website, Soliciting investors, Advertising and promoting own goods, Performing clinical trials for own goods, Publishing own periodical.
Not Goods in trade refusal example
– Boxes are point of sale containers for the toys, games.
– Boxes are incidental to applicants primary goods.
– Not separately marketed as carrying cases.
Services for others refusal example
Not services for others:
– Creating a social media account doesn’t equal to “creating an online community for users”
– Using a social media account to advertise and promote your business is not a service.
Goods / Services Response Options
– Delete the goods or services
– Submit evidence:
- Goods have utility apart from promo use.
- Services are real, perfomed for others and distinct.
– Amend filing basis to §1(b) intend to use basis
Goods/services takeaways TIPS
– Think about it from the customer’s point of view.
– Cannot amend to Supplemental Register.
– Cannot claim §2(f) acquired distinctiveness.