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OVERVIEW OF COMMON FAILURE TO FUNCTION REFUSALS

by | Apr 19, 2025 | Welcome to All About Inventing! | 0 comments

OVERVIEW OF COMMON FAILURE TO FUNCTION REFUSALS

Failure-to-function overview

FUNCTION OF A TRADEMARK IS:

– A proposed trademark is registrable only if it functions as an identifier of the source of the applicant’s goods or services.”

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

Common Scenarios for Ornamentation-Based Refusals:

  1. Excessive Focus on Decorative Aspects:
    • Example: A utility patent claim describes a “decorative element” on an electronic device that serves no purpose other than aesthetics.
    • Solution: Amend the claim to focus on the device’s functional elements and remove references to purely ornamental features.
  2. Design Claims with Functional Elements:
    • Example: A design patent claiming a “decorative and functional shape” when the feature in question is purely ornamental.
    • Solution: Revise the design patent to emphasize the ornamental nature and remove any claims to functionality.
  3. Shape or Pattern Without Utility:
    • Example: A shape or pattern described in a utility patent that is said to be functional but serves no practical purpose.
    • Solution: Either demonstrate the utility of the feature or remove it from the claims if it is truly ornamental.

How to Address a Failure-to-Function Refusal Based on Ornamentation:

  1. Clarify Functionality in Utility Patents:
    • Ensure that all claimed features have a specific, demonstrable function. If a feature is ornamental, remove or revise the claim to focus on the invention’s actual utility.
  2. Separate Aesthetic from Functional Features:
    • If submitting a design patent, focus solely on the ornamental design and avoid including functional claims. A design patent cannot protect functionality, only appearance.
  3. Provide Evidence of Utility:
    • For utility patents, provide sufficient evidence in the specification or supporting documents showing that the feature in question is not merely ornamental but serves a functional role in the invention’s operation.

 

FAILURE-TO-FUNCTION REFUSAL: TITLE OF A SINGLE WORK

A Failure-to-Function Refusal based on the Title of a Single Work occurs when the USPTO determines that the claimed title (often in the context of a trademark or design patent) does not serve a functional purpose, but is instead merely a decorative or non-distinctive name or label. This typically happens when the title is considered too generic or descriptive, lacking a unique or functional role that sets it apart.

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.

FAILURE-TO-FUNCTION REFUSAL: NAMES OF ARTISTS AND AUTHORS

A Failure-to-Function Refusal related to Names of Artists and Authors occurs when the USPTO finds that the name of an artist or author, as used in a trademark or design patent, does not serve a functional purpose but is instead merely descriptive or ornamental. This type of refusal typically arises in the context of trademarks or trade dress, where the name is being used as part of branding but lacks the distinctiveness required for trademark protection.

Common Scenarios:

  1. Descriptive Use:
    • If the name of the artist or author is used in a way that simply describes the work or its content (e.g., “John Doe’s Best Paintings” or “Jane Smith’s Novels”), it might be refused because it doesn’t function as a distinctive identifier of the source of goods or services.
  2. Merely Ornamental:
    • If the name is used solely as a decorative element (e.g., a signature or stylized name), it may be deemed non-functional because it serves no practical purpose other than as an aesthetic feature.

Solution:

  • Distinctiveness: The name must be shown to uniquely identify the source of goods or services. This could be achieved if the name has acquired secondary meaning (i.e., the public associates the name with a specific source).
  • Non-Descriptive Use: The name should be used in a manner that does not merely describe the goods or services, but acts as a source indicator.

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

 

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

A Failure-to-Function Refusal based on Goods in Trade/Services for Others occurs when the USPTO determines that a trademark or service mark does not function as a source identifier for the applicant’s goods or services, but rather suggests that the mark is being used merely to describe goods or services provided by another party. This often happens when the applicant’s mark appears to be describing goods or services that are not directly produced or provided by them but are instead sourced from a third party.

Common Scenarios:

  1. Describing Goods or Services of Others:
    • If a mark is used to suggest that the applicant is offering goods or services on behalf of another business, rather than their own, it can be deemed as not functioning properly.
    • Example: Using the name of a well-known manufacturer or brand (e.g., “Nike Products” when the applicant does not actually manufacture or distribute Nike goods) may indicate that the applicant is merely selling goods for another party, rather than creating or controlling the goods themselves.
  2. Use of Third-Party Identifiers:
    • If the trademark consists of a name or identifier that is typically used to represent another entity’s product, the USPTO may view it as an indication of the goods or services of that third party, not the applicant’s own goods or services.
    • Example: Using a phrase like “Authorized Reseller of XYZ Goods” may result in a refusal because the mark is seen as identifying the relationship with the third party rather than the applicant’s unique goods or services.

Solution:

  • Demonstrate Source Identification: The applicant must show that the mark functions as an identifier of their own goods or services, and not as a description of goods or services from another source.
  • Amend Usage: If the applicant is simply reselling goods from another source, the mark should be clarified as a trademark for the applicant’s specific goods or services, without implying that they are offering products for someone else.
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