1202.17(c)(ii)(A) Applications Based on Sections 1(b), 44, or 66(a)
Generally, the failure-to-function refusal is a specimen-based refusal. TMEP §1202. However, the examining attorney may issue a failure-to-function refusal for applications based on §1(b), §44, or §66(a) if information in the application record or other available evidence is dispositive of the failure of the relevant matter to function as a mark. See TMEP §1202; cf. In re Right-On Co., 87 USPQ2d 1152, 1157 (TTAB 2008) (noting that, with respect to §66(a) applications, "it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark").
If the examining attorney is otherwise issuing an Office action and anticipates refusing a mark in a §1(b) application on failure-to-function grounds once the applicant submits a specimen with an allegation of use, the examining attorney should advise the applicant of the potential refusal. If possible, this should be done in the initial Office action. However, failure to provide an advisory does not preclude an examining attorney from later refusing registration. See TMEP §1202.