TMEP 1301.04(g)(ii): Failure to Show the Mark Functioning as a Service Mark

This is the October 2015 Edition of the TMEP

Previous: §1301.04(g)(i) | Next: §1301.04(h)

1301.04(g)(ii)    Failure to Show the Mark Functioning as a Service Mark

A specimen may show the mark used as something other than a service mark for the identified services. For instance, it may show the mark used solely as a trade name, only as the name of a computer software program or application, exclusively as the name of a method, process, or system, or merely as informational or ornamental matter. See TMEP §§1202.01, 1202.03–1202.04, 1301.02(a), 1301.02(e)–1301.02(f). In such cases, the mark does not function as a service mark to identify and distinguish the applicant’s services and indicate their source. Thus, a failure-to-function refusal should issue under Trademark Act Sections 1, 2, 3, and 45. 15 U.S.C. §§1051─1053, 1127; see TMEP §1301.04(e). No specimen refusal should issue, however, if the mark identifies, for example, both a process and the identified services and the requisite mark-services association is present. See TMEP §§1301.02(e), 1301.04(j) (Example 21 (LEADING EDGE TONERS)).