TMEP 1202: Use of Subject Matter as Trademark

This is the October 2015 Edition of the TMEP

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1202    Use of Subject Matter as Trademark

In an application under §1 of the Act, the examining attorney must determine whether the subject matter for which registration is sought is used as a trademark by reviewing all evidence (e.g., the specimen and any promotional material) of record in the application. See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) (examining attorney should look primarily to the specimen to determine whether a designation would be perceived as a source indicator, but may also consider other evidence, if there is other evidence of record).

Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re The Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):

The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.

Sections 1 and 2 of the Trademark Act, 15 U.S.C. §§1051 and 1052, require that the subject matter presented for registration be a “trademark.” Section 45 of the Act, 15 U.S.C. §1127, defines that term as follows:

The term “trademark” includes any word, name, symbol, or device, or any combination thereof–

  • (1) used by a person, or
  • (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Thus, §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, provide the statutory basis for refusal to register on the Principal Register subject matter that, due to its inherent nature or the manner in which it is used, does not function as a mark to identify and distinguish the applicant’s goods. The statutory basis for refusal of registration on the Supplemental Register of matter that does not function as a trademark because it does not fit within the statutory definition of a trademark is §§23 and 45 of the Trademark Act, 15 U.S.C. §§1091 and 1127.

When the examining attorney refuses registration on the ground that the subject matter is not used as a trademark, the examining attorney must explain the specific reason for the conclusion that the subject matter is not used as a trademark. See TMEP §§1202.01–1202.16 for a discussion of situations in which it may be appropriate, depending on the circumstances, for the examining attorney to refuse registration on the ground that the proposed mark does not function as a trademark, e.g., TMEP §§1202.01 (trade names), 1202.02(a)–1202.02(a)(viii) (functionality), 1202.03–1202.03(g) (ornamentation), 1202.04 (informational matter), 1202.05–1202.05(i) (color marks), 1202.06–1202.06(c) (goods in trade), 1202.07–1202.07(b) (columns or sections of publications), 1202.08–1202.08(f) (title of single creative work), 1202.09–1202.09(b) (names of artists and authors), 1202.11 (background designs and shapes), 1202.12 (varietal and cultivar names), and 1202.16 (model or grade designations).

The presence of the letters “SM” or “TM” cannot transform an otherwise unregistrable designation into a registrable mark. In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984); In re Minnetonka, Inc., 212 USPQ 772, 779 n.12 (TTAB 1981).

The issue of whether a designation functions as a mark usually is tied to the use of the mark, as evidenced by the specimen. Therefore, unless the drawing and description of the mark are dispositive of the failure to function without the need to consider a specimen, generally, no refusal on this basis will be issued in an intent-to-use application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), until the applicant has submitted a specimen(s) with an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)). However, in a §1(b) application for which no specimen has been submitted, if the examining attorney anticipates that a refusal will be made on the ground that the matter presented for registration does not function as a mark, the potential refusal should be brought to the applicant’s attention in the first Office action. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from refusing registration on this basis.

In an application under §44 or §66(a), where a specimen of use is not required prior to registration, it is appropriate for the examining attorney to issue a failure to function refusal where the mark on its face, as shown on the drawing and described in the description, reflects a failure to function. See In re Right-On Co., 87 USPQ2d 1152, 1156-57 (TTAB 2008) (noting the propriety of and affirming an ornamentation refusal in a §66(a) application).

See TMEP §§1301.02–1301.02(f) regarding use of subject matter as a service mark; TMEP §§1302-1305 regarding use of subject matter as a collective mark; and TMEP §§1306-1306.06(c) regarding use of subject matter as a certification mark.