TMEP 1202.19(e): Failure-to-Function Refusal – Mark Not Inherently Distinctive

October 2017 Edition of the TMEP

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1202.19(e)    Failure-to-Function Refusal – Mark Not Inherently Distinctive

The USPTO will not register an applied-for mark unless it functions as a mark. See 15 U.S.C. §§1051, 1052, 1053, 1127; In re Bose Corp., 192 USPQ 213, 215 (C.C.P.A. 1976) ("Before there can be registration, there must be a trademark...."); In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) ("Registration presupposes the existence of a trademark to be registered."); TMEP §1202. That is, the mark must serve as an indicator of the source of the goods or services, identifying and distinguishing them from those of others. See 15 U.S.C. §1127; TMEP §1202.

The examining attorney must determine whether a repeating-pattern mark functions as a trademark or service mark by reviewing the available evidence, including the specimen and any other materials of record. See In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992) ("Since the specimens of record show how the applied-for mark is actually used in commerce, we must primarily look to the specimens to see if the designation would be perceived as a source indicator. However, we may also consider other evidence bearing on the question of what impact applicant's use is likely to have on purchasers and potential purchasers.").

Not every designation that a party places on goods or packaging, or uses in connection with services, is an inherently distinctive source indicator, regardless of the party’s intentions when adopting the designation. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Vertex Grp., LLC, 89 USPQ2d 1694, 1701 (TTAB 2009) ("As is the case with any trademark, mere intent that a word, name, symbol or device function as a trademark or service mark is not enough in and of itself."). Some designations are not capable of serving as a source indicator. See In re Eagle Crest, Inc., 96 USPQ2d at 1229; Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973).