Trademark Registration: Overcoming Failure-to-Function Refusals, Meeting Use and Distinctiveness Requirements

Description

Under the Lanham Act, a term that fails to function as a trademark can be refused registration. The mark must identify the source of the goods and distinguish the goods from those manufactured or sold by others to be registered. A failure-to-function refusal is based on a factfinder’s assessment of likely public perception of the mark.

The Board issued several failure-to-function decisions in recent years, though there is no clear test from the courts. Use of the TM symbol often indicates to consumers the intent to use the mark as a trademark; failure to use the symbol may tip the scales against finding a trademark. However, merely using the symbol may not be enough to establish that the matter is used as a mark.

Evaluating use as a mark often goes hand in hand with the distinctiveness analysis. IP counsel must understand the connection between the two requirements and the implications of use as a mark without distinctiveness and distinctiveness without use as a mark.

Listen as our authoritative panel of IP attorneys discusses the purpose of the failure-to-function requirement and its connection to distinctiveness. The panel will examine how the courts and the USPTO have analyzed failure to function. The panel will also address steps to avoid such a refusal and strategies to overcome a failure-to-function rejection.