Overcoming a Failure to Function Refusal From the USPTO

Obtaining a trademark for your brand is a way to build a reputation and recognition. However, applying for a trademark can be a complicated process and there are a multitude of reasons that your trademark could be denied. Failure to function refusals from the United States Patent and Trademark Office (USPTO) can be among the most frustrating. If your application is denied, there are a number of ways of overcoming a failure to function refusal from the USPTO.

Understanding this type of refusal will empower you to work with your attorney and overcome this setback to keep your intellectual property protected.

Understand Trademarks

When applying for trademark protections as outlined by the Trademark Act, there are several requirements that the trademark must meet in order to qualify for registration. These qualifications are known as the Abercrombie scale which is named after the popular clothing retailer. The qualifications fall into a scale:

Generic. If the term is too generic, then it will not qualify for a trademark. For example, the term “book” would not be a trademark because it is a generic term.
Descriptive. While some descriptive terms could gain a trademark, if the description is simply an overview of how something works, it will likely be refused.
Suggestive. These types of terms are thought to be derived from a place that challenges consumers to think imaginatively in reaching conclusions about the product. Because of their creative blend of meanings, these trademarks are often approved.
Arbitrary and fanciful. These are often the most approved types of trademarks because they are distinctive in nature and make it difficult for consumers to associate that word or phrase with anything other than your product or service. While it can have meanings outside of your use, it becomes a truly unique way to identify your brand.

While you may feel your trademark is worthy of approval, the USPTO must also find it meets the appropriate qualifications before issuing the protections.

Failure to Function

When a trademark is refused on the grounds of failure to function, the result is because of its failure to fall within the scale set by the Abercrombie scale. The rationale behind this is to prevent large businesses from monopolizing common, everyday usage for a variety of terms and images. Trademarks are used to identify the source of something, monopolization would limit that concept.

For companies producing decorative or ornamental products, the refusal is often based on the trademark application designating a phrase or word on the front of the article rather than on the tag or label. This does not mean that companies promoting their brand through small images or logos consistently on all apparel could not gain a trademark, such as the Polo logo, which appears in several places.

Another way that a failure to function refusal could be issued is if the potential trademark is associated with common use. In instances where use is common, the trademark would be refused because it would not help to indicate the source and, therefore, fails to function as a trademark.

These are a few of the ways in which a trademark could be issued a failure to function and could then be denied. Working with an attorney, you could file an appeal with the Trademark Trial and Appeal Board, which can review the evidence in your case and issue a reversal of the original refusal. However, meeting the criteria of a trademark can avoid any refusal.

In some cases, identifying the use of your trademark for a period of five years or more may help to appeal the refusal you were issued. When you are able to show the history and recognition of your brand, you are able to claim the right to use specific branding.

FAQs

Q: How Do You Overcome a Failure to Function Refusal?

A: Overcoming a failure-to-function refusal begins by having a conversation with your attorney regarding why your refusal was issued. When you present evidence to the appeals board, you must be able to show specific and consistent evidence for usage and unique distinction. Based on your specific refusal, your attorney will be able to guide you through the appeal process and help you collect the necessary evidence that you may need.

Q: How Do You Respond to a Trademark Refusal?

A: When responding to a trademark refusal from the USPTO, there are several steps you can take. You will want to work with an attorney who can help you draft your appropriate response and ensure that it addresses the refusal. This can be done through phone, email or the Trademark Electronic Application System. Your response will need to address the legal problems that were raised in the refusal, as well as any supporting documentation.

Q: How Can You Overcome a Merely Descriptive Refusal?

A: Overcoming a descriptive refusal begins with working with an attorney to review the refusal itself. Then, together, you will collect and identify evidence and documentation that supports why the refusal should be reconsidered. In some cases, showing evidence of consistent use over the past five years can be enough to overcome the refusal. However, your attorney will help you review all your options.

Q: What Is the Rejection Rate for USPTO?

A: According to the USPTO, the rejection rate for trademarks varies depending on the type of application. The rejection can be for any number of reasons. With application filings on the rise, the number of application acceptances still outpaces refusals. However, when more trademarks are registered, the likelihood of a refusal may increase due to the originality of the new application versus what is already in existence.