"FAILURE TO FUNCTION" When that Catchy Slogan You ♥ is Not a Mark At All

Jane Shay Wald

Irell & Manella LLP

A cultural historian could learn a lot about affinities, preferences, political/social movements, and fads by reviewing a decade-by-decade roster of trademark applications denied by the Patent and Trademark Office for failure to function. Whenever a term or image captures the public’s consciousness so that it seems to be everywhere, a quick trip to www.uspto.gov will reveal that one of the places that term shows up is on the PTO database. In multiples.

Some applicants misunderstand trademark law and assume by filing for the latest buzzword in connection with a product or service they’ll get a "lock" on the term, imagining fame and royalties. Others, with a somewhat better understanding of the law, try to grab the buzzword for an unusual product—avoiding a "descriptiveness" rejection. Sometimes they use a TM and display the term in a "trademarky" way—on a label, or at the point of purchase on-line. In response to the office action refusing the proposed mark, they make use of the mark for the claimed goods and request to transfer the application to the Supplemental Register, or assert acquired distinctiveness, or come up with more traditional-looking specimens. None of this works to overcome a failure to function refusal.¹