BitLaw

904.07(b)    Whether the Specimen Shows the Applied-for Mark Functioning as a Mark

In a §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark, the examining attorney must also evaluate the specimen to determine whether the applied-for mark is used in a way that shows that: (1) the applied-for mark identifies the goods/services of the applicant and distinguishes them from the goods/services of others; and (2) the applied-for mark indicates the source of those goods/services. See 15 U.S.C. §1127. If use on the specimen fails in either regard, the record lacks the requisite evidence that the applied-for mark functions as a mark.  The following non-exhaustive list reflects examples where review of the specimen would indicate a failure to function as a mark:

• Applied-for mark is used solely as a trade name (see TMEP §1202.01);
• Applied-for mark is mere ornamentation ( see TMEP §1202.03);
• Applied-for mark is merely informational matter ( see TMEP §§1202.04, 1301.02(a));
• Applied-for mark identifies the name or pseudonym of a performing artist or author ( see TMEP §1202.09(a));
• Applied-for mark identifies the title of a single creative work ( see TMEP §1202.08);
• Applied-for mark identifies a model number or grade designation ( see TMEP §1202.16);
• Applied-for mark is merely a background design or shape that does not create a commercial impression separable from the entire mark ( see TMEP §1202.11);
• Applied-for mark identifies a process, system, or method ( see TMEP §1301.02(e));
• Applied-for mark is used to refer to activities that are not considered "services" ( see TMEP §§1301.01 et seq.);
• Applied-for mark is used solely as a domain name ( see TMEP §1215.02);
• Applied-for mark is used solely to identify a character ( see TMEP §1301.02(b)).

If the deficiency in a specimen amounts to failure to demonstrate use of the applied-for mark as a trademark and/or service mark, the examining attorney must issue a "failure-to-function" refusal of registration on the ground that the applied-for mark does not function as a trademark or service mark, in addition to advising the applicant of the appropriate response options, which may include requiring the applicant to submit a substitute specimen.  The statutory bases for refusal are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1127, for trademarks, or §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, 1127, for service marks. See In re Osmotica Holdings Corp., 95 USPQ2d 1666 (TTAB 2010); In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008); In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008); In re DSM Pharms., Inc., 87 USPQ2d 1623 (TTAB 2008).  Generally, when initially refusing registration on the ground that the subject matter does not function as a trademark or service mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a trademark or service mark and, if necessary, a supporting affidavit or declaration.  See TMEP §904.05 regarding affidavits supporting new specimens.  However, in instances where the nature of the mark, such as with informational marks, indicates that consumers would never perceive the mark as source indicating, regardless of the manner of use, no such advisory need be given.

This "failure-to-function" specimen refusal also applies to specimens for collective and certification mark applications. If the deficiency in a specimen amounts to failure to demonstrate use of the applied-for mark as a collective or certification mark, the examining attorney must issue a "failure-to-function" refusal of registration on the ground that the applied-for mark does not function as a collective or certification mark and advise the applicant of the appropriate response options, which may include requiring the applicant to submit a substitute specimen. The statutory bases for refusal are §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, 1127. See In re Int’l Inst. of Valuers, 223 USPQ 350 (TTAB 1984); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967); Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958). Generally, when initially refusing registration on the ground that the subject matter does not function as a collective or certification mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a collective or certification mark and, if necessary, a supporting affidavit or declaration. See TMEP §904.05 regarding affidavits supporting new specimens. However, in instances where the nature of the mark, such as with informational marks, indicates that consumers would never perceive the mark as source indicating, regardless of the manner of use, no such advisory need be given.

For additional specimen refusals for collective and certification marks and more information regarding whether the specimen shows the applied-for mark functioning as a collective or certification mark, see TMEP §1303.01(a)(i)(C) for collective trademark and collective service mark specimens, see TMEP §1304.03(b) for collective membership mark specimens, and see TMEP §1306.04(c)-(d) for certification mark specimens.