Failing to Function – a Short Defense of a Frustratingly Vague Refusal

The USPTO has dramatically increased its use of the “failure to function” refusal in recent years. Total “failure to function” refusals jumped from under 400 in 2001 to under 1,300 in 2010 to over 3,600 in 2020.

We took a look at marks that have at least two words with a filing date September 1, 2019 and March 1, 2020 and got a failure to function refusal. Overall, the failure to function refusal is “holding up” with frequently. Overall, 75% of applications that received a failure to function refusal and have a “final” decision (abandoned / registered) went abandoned. Represented applicants did relatively better, but still only had a 32% registration rate vs. a woeful 15% for unrepresented applicants. Class 25 applicants fared especially badly, with only 12% getting through to registration. Lots of these marks had a “bumper sticker saying on a t-shirt” aire about them — applications for marks like GOD IS THE DESIGNER, MY 1ST CHRISTMAS, FAMILY DINNER SURVIVOR, STOP THE SPREAD, and DON’T TALK TO ME all foundered on the rocks of the failure to function refusal.

The failure to function refusal can be frustrating for applicants and their counsel, because it’s one of the least “defined” (either statutarily or via the TMEP). It’s never a good sign when the “statutory support” is as ill-defined as “Section 1, 2 and 45,” as is the failure to function refusal! The Trademark Office could help reduce this anxiety by better clarifying the line between an “informational message” or an “expressive statement” that doesn’t function as a source indicator vs. a slogan that does.

Nevertheless, it is clear that the failure to function refusal is serving an important purpose. It’s clearly keeping a lot of “marks” that are primarily informative or expressive rather than source-indicating off the trademark registry. In the long run, that’s a good thing, since it provides more room for the rest of society to engage in expressive speech without running into trademark claims.

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