The Failure-to-Function Doctrine
Introduction
In the world of trademarks, the primary purpose of a mark is to identify and distinguish the source of goods and services. However, not all marks are capable of being identified as valid trademarks. When a proposed mark is incapable of functioning as a trademark, it may face a refusal known as “Failure to Function” by the Trademark Office or in some cases by the Trademark Trial and Appeal Board (TTAB).
Before being identified and registered, the trademarks are scrutinized to ensure that they possess the necessary distinctiveness and can effectively differentiate goods or services in the marketplace. “Failure to Function” refers to a situation where a trademark application is rejected because the proposed mark is deemed incapable of fulfilling its
essential role as a source identifier. Therefore, in order to acquire a registration, a trademark must function as a trademark along with being distinctive.
[Image Sources : Shutterstock ]
There are several possible reasons why a mark may fail to function. Typically, the marks that are informative or descriptive of the product, or those which convey a message that is commonly used, or is generally used to express religious, political or social views, etc, may face rejection based on failure to function. The more familiar the term or phrase is, the less likely it will be a mark that could be used to identify a single source of goods or services. Marks consisting of designs or patterns may also be rejected as a failure to
function.
When a trademark is rejected primarily because it is decorative or ornamental, and lacks the ability to function as a source identifier, it is called an ornamental refusal. Marks consisting of commonplace designs or patterns that are considered ordinary or irrelevant within the particular industry may be rejected.
For example, if dairy products are being sold with a logo of a cow/buffalo on it, then such a logo will not qualify to become a valid trademark and may not acquire registration. It may be rejected for being a mere graphic representation of the product.
However, if a clothing brand names itself ‘Brown Bear’ and designs a logo depicting an actual brown bear for the apparel, then there is a chance for such a brand name and a logo to pass the registration criterion and become a valid trademark if it has acquired secondary meaning so as to be associated with the clothing brand, since the brand name
or the logo is not a direct depiction of the kind of products being marketed.
In cases where the proposed mark is considered to be informational matter, widely used messages, or any religious texts that lack distinctiveness and any capability to gain a secondary meaning, the mark is rejected on descriptive grounds. Descriptive marks directly convey information about the product or service.
For example, an ice cream that uses the name “Creamy” for marketing or a cookie brand uses the tagline “Have a Nice Day!”. Such marks would not get registered as they are directly descriptive of the product or claim rights over a commonly used phrase. Likewise, sometimes the dictionary definitions of each word in the mark are examined
before granting the registration.
Recently, a mark called ‘MAMA BEAR’ approached the TTAB for application in connection with a clothing brand. The Trademark Examining Attorney had dismissed the original registration application on the grounds that the mark did not “…indicate the source of Applicant’s goods and to identify and distinguish them from the goods of others.” The TTAB conducted a ‘failure-to-function’ analysis, on the basis of all the evidence on record. It examined whether the mark identified the applicant as the source of the goods in the mind of the consumers, or was simply a commonly used phrase.
Upon evaluation, the TTAB found that the phrase ‘MAMA BEAR’ was a “…common, widely used and generally understood the term to convey a message of an ordinary or familiar concept or sentiment – aggressive protective parenting.” According to the Board, it is a mark that the consumers might associate with a clothing brand but not
necessarily with the client’s brand. Therefore, MAMA BEAR was denied registration.
The examination of trademarks in this respect is getting more and more stringent and rigid, making it less applicant friendly. Each case brought before the TTAB raises a unique concern about registrability and formulates yet another criterion for trademark registration. Thus, the rules regarding the grounds of failure are very unclear and are
still evolving. This leaves the brands and their counsels quite uncertain.
Author: Vaishnavi Choudhary Rajiv Gandhi School of Intellectual Property Law IIT Kharagpur, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
