Failure to Function: Ornamental Use, Informational Matter, and the Marks That Are Not Marks
By Casey Scott McKay ·
The most common reason a trademark application dies is not that someone else got there first. It is that the thing on the application is not functioning as a trademark at all - it is decoration, a social message, a size designation, or a phrase everybody already uses. This article explains the failure-to-function doctrine, which is not one refusal but a family of them sharing a single premise: a mark must be perceived by consumers as identifying source. It works through ornamentality and the four-factor analysis courts and the Board actually apply, the secondary source doctrine that rescues a licensor's merchandise, informational and widely used messages, and the special treatment of slogans, hashtags, and titles. It then addresses the harder question underneath: whether a merchandising right exists at all, and why decisions from the 1970s that assumed it are hard to reconcile with the statute. It closes with what to do when the refusal arrives, and the design decisions that prevent it.
IP and Technology > Trademarks | Article | Published 2 October 2023 - Updated 18 September 2024 | Casey Scott McKay - marksy.us
Summary. The most common reason a trademark application dies is not that someone else got there first. It is that the thing on the application is not functioning as a trademark at all — it is decoration, a social message, a size designation, or a phrase everybody already uses. This article explains the failure-to-function doctrine, which is not one refusal but a family of them sharing a single premise: a mark must be perceived by consumers as identifying source. It works through ornamentality and the four-factor analysis courts and the Board actually apply, the secondary source doctrine that rescues a licensor's merchandise, informational and widely used messages, and the special treatment of slogans, hashtags, and titles. It then addresses the harder question underneath: whether a merchandising right exists at all, and why decisions from the 1970s that assumed it are hard to reconcile with the statute. It closes with what to do when the refusal arrives, and the design decisions that prevent it.
Keywords: failure to function · ornamental refusal · informational matter · widely used message · in re olin · secondary source doctrine · in re paramount pictures · in re eagle crest · in re texas with love · d.c. one wholesale · merchandising right · boston hockey · smack apparel · jobs daughters · supplemental register · size location dominance significance · slogan refusal · tmep 1202.03 · perceived as a mark
This is premium Marksy content — the full document is available to subscribers.