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ARTICLE · 03 DECEMBER 2020

The Pitfall Of "Failure To Function" As A Trademark

Cowan, Liebowitz & Latman, PC
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If you adopt a recognized or widely used concept or sentiment as your trademark, don't expect to have the exclusive right to use it or to register it even if you use it in a...

United StatesIntellectual Property
William Borchard
William Borchard

If you adopt a recognized or widely used concept or sentiment as your trademark, don't expect to have the exclusive right to use it or to register it even if you use it in a traditional trademark manner.

The relevant portion of the Trademark Act's Section 45 definition of a trademark is a term used "to indicate the source of the goods, even if that source is unknown."  15 U.C.C. § 1127.

In recent years, the U.S. Patent and Trademark Office (USPTO) has been rejecting an increasing number of applications to register marks on the ground that they fail to function as an identification of source in the relevant public's perception.

The Trademark Trial and Appeal Board (TTAB) generally has affirmed these refusals as was exemplified by three decisions issued on the same day, all of which were designated as precedents of the TTAB.

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