USPTO Office Action Refusal – Failure to Function as a Trademark

A growing number of trademark applicants are receiving US Patent & Trademark Office (USPTO) Office Actions refusing registration on the basis of “failure to function as a trademark.” This USPTO Office Action Refusal can be surprising, especially for applicants who believe a phrase or slogan is unique to their brand. But the USPTO evaluates marks differently from consumers, and understanding the legal standard is essential for avoiding costly delays.

Below is an in-depth explanation of what a “failure to function” refusal means, how the USPTO evaluates such marks, and what applicants should know before choosing a brand name or slogan.

What Does “Failure to Function as a Trademark” Mean?

The USPTO has issued an increasing number of refusals based on “failure to function as a trademark.” A trademark must serve as a source identifier.
15 U.S.C. §§1051–1053, and §1127.

A consumer must understand there is a specific source to the goods or services. For example, upon seeing a white swoosh on a black background, most consumers will know that the source of the goods is Nike. This is a key function of trademarks, to indicate the source of the goods or services.

The USPTO reasons that a common phrase cannot indicate the source of the goods or services because it is in widespread use. If the USPTO finds evidence of widespread use of the phrase outside of the trademark application, the USPTO will issue a refusal based on failure to function as a trademark.

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How the USPTO Describes This Refusal

A refusal based on failure to function as a trademark will generally state something like:

• The applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that conveys an ordinary, familiar, well-recognized concept or sentiment.
  
• Terms and expressions that convey an informational message are not registrable.
  
• The more commonly a term or expression is used, the less likely that the public will use it to identify only one source, and the less likely that it will be recognized by purchasers as a trademark or service mark.
  

Key TTAB Cases Involving Failure to Function

BOSTON STRONG

The Trademark Trial and Appeal Board (TTAB) recently issued a decision on this topic, refusing registration of “BOSTON STRONG” for athletic entertainment services. The TTAB reviewed evidence of public perception of the phrase and discussed the rapid and widespread use of the phrase by many on a variety of different goods or services, including some entertainment services. The decision had pages of evidence of this widespread use. This decision is currently on appeal. In re Franklin Sports, Inc., TTAB 2025.

I ♥ DC

The USPTO refused registration of the phrase. The TTAB stated that the evidence showed that “I ♥ DC” was widely available on a range of goods from a variety of sources. The TTAB held that “I ♥ DC” would be perceived by consumers as an expression of enthusiasm for the city of Washington, DC, and that consumers would not perceive the phrase as an indicator of the source of the goods.
D.C. One Wholesaler v. Chien (TTAB 2016).

GOD BLESS THE USA

The TTAB refused registration of “GOD BLESS THE USA” because the proposed trademark failed to function as a trademark. The TTAB stated:
“Consumers ordinarily take widely used, commonplace messages at their ordinary meaning, and not as source indicators, absent evidence to the contrary.”
In re Lee Greenwood (TTAB 2020).

Other Phrases Refused for Failure to Function

• DRIVE SAFELY, In re Volvo Cars of North America, Inc. (TTAB 1998)
  
• FARM TO TABLE, In re Fowles Wine Party Ltd. (TTAB 2017)
  
• INVESTING IN AMERICAN JOBS, In re Wal-Mart Stores, Inc. (TTAB 2019)
  
• TEAM JESUS, In re Team Jesus LLC (TTAB 2020)
  
• TEXAS WITH LOVE, In re Texas With Love, LLC (TTAB 2020)
  

These examples illustrate how even seemingly unique or heartfelt phrases are often rejected when they do not rise to the level of a source-identifying trademark.

Why Distinctiveness Matters to the USPTO

When considering possible names for a trademark, it is best to have a distinctive name.

The USPTO considers fanciful or arbitrary words to be the most distinctive.

• An arbitrary trademark is COACH for handbags or AMAZON for an online retail store.
  
• A fanciful trademark is a made-up word, like KODAK for cameras, LYCRA for fabric, or TEFLON for non-stick coating on pans.
  

A commonplace phrase is not distinctive. And the USPTO is likely to refuse registration based on failure to function as a trademark.

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How Failure to Function Differs From Other USPTO Refusals

If you are comparing failure-to-function refusals with other common grounds for refusal, you may also find it helpful to read the firm’s detailed analyses on:

• USPTO Office Action, Section 2(d) Refusal: Similarity Between Trademarks
  
• USPTO Office Action, Section 2(d) Refusal: Relatedness of Goods and Services
  

How Applicants Can Avoid a Failure-to-Function Refusal

Choose a Distinctive Mark

To have the best chance of success with the USPTO and to create a brand that consumers will recognize, applicants should select marks that are:

• Fanciful
  OR
• Arbitrary
  

And avoid:

• Common slogans
  
• Descriptive or informational phrases
  
• Messages of support, protest, location pride, or cultural sentiment
  
• Widely used expressions in commerce
  

Conduct Searches Beyond USPTO Records

In evaluating a “failure to function” refusal, the USPTO reviews all evidence of use, which includes:

• Online marketplaces
  
• News articles
  
• Merchandising platforms
  
• Social media
  
• Local or regional use by multiple businesses
  

If a phrase is in widespread use, the USPTO will almost certainly refuse it.

Understand That Use Alone Does Not Create Distinctiveness

Even if a business has used a phrase for years, if the phrase is recognized by the public as an ordinary message rather than a brand name, the USPTO will deem it non-source-identifying.

Conclusion

Failure-to-function refusals are increasingly common, especially for slogans, affirmations, and widely used cultural expressions. Applicants should carefully consider distinctiveness before investing time and money in a trademark application. Choosing a unique, arbitrary, or fanciful term significantly increases the chance of successful registration and avoids lengthy and often unwinnable disputes with the USPTO.