1202.17(c)(ii)(B) Applicant’s Response to Refusal
If a mark fails to function because it consists of a universal symbol that is informational or that conveys an informational message, the examining attorney should not suggest that the applicant respond by claiming acquired distinctiveness or amending the application to seek registration on the Supplemental Register. The relevant issue is not whether the mark is distinctive, but, instead, whether the matter in question even functions as a mark. See In re Wakefern Food Corp., 222 USPQ 76, 79 (TTAB 1984) (agreeing with the examining attorney that "evidence of distinctiveness under Section 2(f) of the Act is irrelevant to the issue of whether the subject phrase [at issue] functions as a technical service mark"). Therefore, neither a claim of acquired distinctiveness under Trademark Act Section 2(f) nor an amendment to the Supplemental Register is a proper response to the refusal. See In re Wakefern Food Corp., 222 USPQ at 79. Furthermore, allowing registration in these instances, either on the Principal Register under Section 2(f) or on the Supplemental Register, would inhibit others from using merely informational matter that should be freely available to use. See TMEP §1202.04; cf. In re Volvo Cars of N. Am. Inc., 46 USPQ2d at 1460-61 (Affirming refusal to register DRIVE SAFELY because "to grant exclusive rights to applicant in this ordinary and commonly used safety admonition would interfere with the rights of others in the automobile industry to freely use the familiar phrase... to promote safe driving and/or that purchasers can drive safely in their make of automobiles...."); In re Schwauss, 217 USPQ at 362 ("[T]o allow registration [of stylized word FRAGILE for labels and bumper stickers] would achieve the absurd result of hampering others in their use of the common word ‘fragile’ on any label designed to be placed on any other object to indicate the fragility of said object.").
In addition, the examining attorney should not suggest that the applicant submit a substitute specimen or amend to an intent-to-use filing basis in these cases. If the mark is informational or conveys an informational message, the applicant likely will be unable to provide a specimen showing proper trademark or service mark use. The applicant may amend the application to an intent-to-use basis, but it likely will only temporarily overcome the refusal, given that a specimen showing proper trademark or service mark use is required before a registration may issue. See TMEP §1103. The examining attorney must review any substitute specimen submitted to confirm that refusal remains warranted.
Finally, if a mark consisting of a universal symbol fails to function only because it is used in an ornamental manner on the specimen, and it is possible that the mark could function if used in a trademark manner, then all of the response options discussed immediately above should be suggested by the examining attorney, if otherwise appropriate.