What is a failure to function as a trademark refusal? Failure to function is one of several reasons the United States Patent and Trademark Office (USPTO) may deny your trademark proposal. It’s important to know what qualities may result in your trademark being ineligible for registration.

The less likely your trademark is to be rejected by USPTO, the sooner you can reap the benefits and begin building your business branding. Working with a qualified trademark lawyer can streamline this process.

Understanding Trademark Quality Requirements

Examining attorneys at the USPTO will carefully review each trademark application that comes through the office. Obtaining an official trademark registered with the government is an excellent way to distinguish your brand, and doing so also comes with legal protections. Since registration prohibits other businesses from stealing your trademark or benefiting from strongly emulating your trademark, the USPTO must investigate each application diligently to avoid any conflicts.

When examining a trademark submission, the USPTO attorney will look for an accurate and complete application, any glaring similarities to existing trademarks within the same category of goods or services, and that your trademark classification is correct for what your business offers. The attorney will also make sure your trademark is not solely descriptive, too common or generic, primarily decorative, or other qualities that may deem it as unqualifying.

The USPTO is looking for a trademark that is relatively original, distinctive, and not merely descriptive, suggestive or creative, fanciful, and/or arbitrary. Trademarks that fall into this general range of qualities are likely to be approved and less likely to suffer from other businesses infringing upon the trademark. There are multiple reasons your application may be denied, including on the basis of a “failure to function.”

Trademark Refusal on the Grounds of Failure to Function

A failure to function refusal may result from your trademark submission if the examining attorney finds the proposed trademark does not fall within the USPTO’s scale of acceptable characteristics. A failure to function is typically issued if the potential trademark is too easily associated with common use.

The foundation of this reasoning is to bar large businesses from having a monopoly on common, everyday terms and imagery that many similar businesses likely use in their advertising. If a word or phrase is too commonly used within the larger category of a specific category of goods or services, it’s unlikely to be trademarked.

The function of a trademark is to identify the source of a distinguished mark as being synonymous with a business’s branding. A generic or commonly used trademark element likely doesn’t help indicate the source since its hypothetical use likely would result in confusion within the marketplace and frequent infringement problems.

What You Can Do After a Failure to Function Rejection

It’s advised to meet with a qualified trademark attorney if you receive a failure to function refusal or other grounds for rejection. Depending on the specifics of your circumstances, you may have a few different options available. Your experienced lawyer can review your application and determine the ideal course of action. You may choose to file an appeal to get the evidence of your case reviewed and possibly reverse the refusal.

An appeal may be supported by showing your use of the trademark (unregistered) for a period of time if the history of your brand recognition can be evidenced. This would effectively be an argument that your specific trademark has inherently become distinctive over time through usage. In other cases, it may be more advantageous to try changing or specifying elements of your trademark— aiming for the next application to be approved with no issue.

FAQs

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

A: If you want to overcome a failure to function and proceed with registration, there are a few options. You may choose to appeal the USPTO’s findings, entailing a new examining attorney reviewing the evidence of your case and potentially reversing the refusal.

Depending on the situation, you may be able to use the unregistered trademark with little chance of any issue, or it might be more advantageous to alter certain aspects of the trademark before sending in a new application.

Q: What Are the Grounds for Refusing a Trademark Registration?

A: The grounds for refusing a trademark’s application for registration may be based on one or more issues noted during the examining attorney’s evaluation. Potential problems include incomplete information, incorrectly filled-out paperwork, the trademark being misclassified, or too similar to an existing trademark where confusion in the marketplace is likely. Valid grounds for refusal also include a trademark being too generic, common, merely descriptive, indistinct, etc.

Q: Can I Use a Canceled Trademark or an Abandoned One?

A: You may be able to use a trademark that’s been canceled or abandoned by its original owner (or yourself), but do so cautiously. It’s advised that you consult with your qualified trademark attorney before you proceed to use a trademark that was rejected by the USPTO, one whose application was abandoned, or a trademark whose registration has been canceled. The trademark may be similar to an existing one, the owner of which could claim trademark infringement.

Q: How Can I Avoid My Trademark Getting Rejected?

A: Your strongest chance of avoiding a trademark rejection is to allow a trained trademark attorney to help you in preparing your application. A trademark lawyer will have access to resources through which to conduct a comprehensive search of registered trademarks and a deep understanding of which aspects of your trademark may be flagged by the USPTO.

The agency will be looking for a trademark that’s original and unique, effective, creative, and ideally somewhat fanciful, arbitrary, or suggestive.

Talk to a Law Professional About Your Trademark

The team at Four Reasons Legal has years of practical experience in all matters related to intellectual property, domain name and trademark registrations, disputes, and infringement claims. We’ve successfully guided numerous clients through these legal aspects of building a business. We can help with your case, too— no matter how complex or challenging. Schedule a consultation with us today to speak with a kind and detail-oriented trademark attorney.