Proving A Slogan Fails To Function As A Trademark

To be registrable, a trademark must identify and distinguish an applicant's goods from those of others and indicate the source of those goods.

When an Examining Attorney or an opposer challenges a phrase on the ground that it fails to function as a trademark, the burden is on the challenger to prove the phrase is merely informational or is a common phrase (ordinarily used in the industry). We previously covered this in "Refuting a 'Failure to Function' Refusal to Register a Trademark" concerning a case in which the Trademark Trial and Appeal Board (TTAB) reversed an Examiner's failure-to-function refusal to register MAKE YOUR PASSION YOUR PAYCHECK for clothing.

A recent opposition decision, in which the TTAB held evidence unpersuasive to establish a failure-to-function claim, is instructive as to what might constitute sufficient proof.